Handling Trademark Infringement Issues on Etsy

By Josh Gerben, Esq.

The online marketplace Etsy.com has become a place where artisans and antique collectors not only sell their wares, but run full-fledged, dedicated businesses through the site. That’s how popular it now is. With that popularity has come, as Etsy continues to expand, a vast number of new sellers every day, looking to take advantage of the site’s success.

With that many vendors in the Etsy marketplace, the risk of trademark infringement – purposeful or inadvertent, by you or by another seller – increases greatly. A registered trademark protects you from those who may wish to infringe on your name and take advantage of your success, and, it also gives you confidence that you are not conducting business while in infringement of anyone else – a situation that can have legal and financial implications for you in the future. Here, we’ll take a look at the further specifics of the Etsy platform, and why registering a federal trademark is a smart move for your Etsy business.

Etsy has unique rules regarding trademark infringement claims.

Unlike a trademark infringement claim in the general marketplace, which would normally go through the Federal Court system, Etsy handles claims on a more self-contained, though still rigorous, basis. A trademark owner can notify Etsy of a perceived infringement without the need to file a federal lawsuit, and, the accused party will be required to take down or modify the listing in question order to comply.  That being said, unfortunately, Etsy’s system is open to abuse.

You may need to file counter claims through Etsy.

If you receive an ‘Infringement Notification’ from Etsy, and you believe that your product name, shop name, or other use of the mark in question is legitimate and not infringing, you may file a counter claim – again through Etsy. That being said, unless you own the federal trademark registration, Etsy is likely to side with the individual making the complaint.  Therefore, to protect yourself from frivolous take-down notices (of which my firm has seen many) you should ensure your trademark is registered.

A trademark strengthens your counter claim.

As mentioned above, owning a trademark on your shop name and product names is the best defense you can have against claims of infringement – especially those that may be ill-founded and designed to put competitors at an unfair disadvantage. While Etsy’s claim system allows for “good faith” explanations of why a mark may or may not be infringing, a federal trademark provides concrete proof, backed up by the USPTO, that you are indeed the rightful owner of a mark, and entitled to use it freely.

A trademark dissuades those who might abuse the Etsy claim system.

Those who are looking to abuse the claim system through illegitimate infringement accusations are likely looking for the “low hanging fruit” – shop owners who don’t own their trademarks and are unsure how to counter claim – or if they’re able to. Owning a trademark listed on the USPTO Principal Register, along with the display of the small circled “R” registration symbol, shows that you are the sole claimant to that mark, and that you intend to use it and defend it. Individuals and businesses that send take-down notices in an attempt to gain an unfair advantage in the Etsy marketplace are less likely to send such notices if you have the federal trademark registration.

Registration helps prevent you from infringing.

There may also be legitimate claims of copyright infringement against you. With well over a million active shops, the number of names and trademarks already in use is vast. You can protect yourself from inadvertently infringing on an existing shop or product name by registering a thoroughly researched trademark. Your initial research stage helps you weed out names and marks that are likely to infringe on those already existing. A successfully registered trademark means that the USPTO, after review, has determined that your mark is unique enough to identify you and you alone, and to not infringe on another.

Infringement can lead to fines and damage claims – even if inadvertent.

The potential risks to your business of operating in infringement of another trademark are very real. Beyond simply having your merchandise removed from your Etsy store, you may find yourself being sued for infringement, and, potentially be liable for damages.  Infringing trademarks will also result in the need for you to change your Etsy shop name and username, making it difficult for any customers with whom you’ve established a relationship to find you again.

A federal trademark gives you national rights and protection for interstate, online commerce.

As an online marketplace, Etsy gives its sellers access to buyers nationwide. Since you’ll be operating in interstate commerce, a federal trademark gives you the protections you need, as opposed to the protections of a local or a common law mark. The trademark registration process will also help you to be sure that you don’t infringe on any non-Etsy businesses nationwide, as well as protecting you from claims from any other businesses, anywhere else.

What should you do if you get an Etsy take-down notice?

With an Etsy take-down notice, not only do you have to navigate Etsy’s internal take-down conventions, but federal trademark and copyright laws apply as well.  Defending and responding to claims against you should not be taken lightly – any response or communication you send could end up adversely affecting you in the future, should you make false or incorrect claims. Contacting a trademark attorney to assist you in determining whether you’re entitled to defend or counterclaim, and how to best go about it, is the most reliable way to ensure that you’re retaining and protecting the legal trademark rights to which you’re entitled.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.