Key Takeaways:

  • A cease-and-desist letter does not always indicate legal liability; evaluating the validity of the trademark and your usage is essential.
  • When responding to a trademark infringement notice on platforms like eBay, swift action is crucial to avoid penalties.
  • If you receive a trademark infringement notice, understanding the claims, seeking legal counsel, and considering settlement or litigation options are key steps to resolving the issue.

Using a Cease-and-Desist Letter

A trademark infringement notice can be used should you find that someone is using your trademark without your permission. One of the most common starting methods for dealing with trademark infringement issues is to send a cease-and-desist letter to the party that you believe is using your mark. Because every trademark issue is unique, you should not rely on using a cease-and-desist letter template to send this notice. Instead, you should hire an intellectual property attorney to help with your case.

When you receive a trademark infringement notice, a cease-and-desist letter is often the first step in asserting your rights. However, it is important to recognize that not all cease-and-desist letters are legally enforceable, and receiving one does not automatically mean that you have infringed on a trademark. It’s essential to carefully review the claims and seek legal advice to understand whether the letter is baseless or legitimate.

Before responding, consider these steps:

  • Evaluate the Trademark's Validity: Ensure that the trademark in question is actually registered and enforceable. A cease-and-desist letter based on an unregistered or weak trademark may not hold much legal weight.
  • Assess Your Use: Consider whether your use of the trademark could be considered "fair use," such as for descriptive purposes or comparative advertising. Fair use is a strong defense against trademark infringement claims.
  • Determine the Extent of Alleged Infringement: Analyze how closely your product or service resembles the trademark in question. Minor differences can sometimes lead to a strong defense.

Engaging a trademark attorney at this stage can be crucial to help navigate these complexities and to respond appropriately, potentially avoiding costly litigation.

How to Respond to a Trademark Infringement Notice on eBay

There have been many people who have built successful businesses from selling goods on eBay, and this can be a very lucrative endeavor when done correctly. However, due to the nature of online sales, it's very common for unscrupulous businesses or people to attempt to sell counterfeit items that use a company's trademark without permission.

One of the main purposes of the 1946 Lanham Act is to shield both trademark holders and consumers from counterfeiting by preventing unauthorized trademark usage. eBay and other internet marketplaces understand how difficult it can be to monitor listings for trademark infringement, which is why most of these services now offer a method for reporting intellectual property claims. However, this means that you could receive a trademark infringement notice with which you disagree, meaning you don't believe that you are using the mark improperly.

If you receive a trademark infringement notice, you need to be very careful about how you proceed. Responding the wrong way may harm your case or even remove your rights to a trademark that you otherwise may have been entitled to use. After receiving notice of a trademark claim, your first step should be to contact a trademark attorney who is familiar with infringement cases.

Users of eBay must comply with an extensive claims policy related to copyrights and trademarks. This policy is known as the Verified Rights Owner (VeRO) program. VeRO is meant to prove that eBay is committed to protecting the rights of trademark owners while making sure that customers do not purchase counterfeit goods. With VeRO, there is a process for reporting trademark infringement, as well as the quick removal of listings that have been identified as suspicious by eBay administrators. However, because eBay's employees aren't experts in intellectual property, you could end up with a listing being removed incorrectly.

There are a variety of reasons why your eBay listing could be removed. For starters, if it appears that the goods you are selling are counterfeit, your listing can be taken down. Your listing may also be removed due to the likelihood of confusion, which means that a company believes that your mark is too close to its mark, and it believes that consumers will be confused by the similarity.

The “first sale” doctrine states that you are allowed to resell items you bought legitimately without a company being able to stop the sale. This doctrine will be your go-to defense if your eBay listing is removed. You may also be able to restore your listing if you own a federal trademark on the goods that you are attempting to sell.

Anyone can file a claim against your listing if they have a “good faith” belief that you are violating trademark rights. While the person making the claim does need to provide their email address and other forms of verification, eBay has no concrete definition of “good faith,” which could lead to false claims.

When a claim is filed, eBay will provide you with the claimant's address and recommend that you make direct contact. The person accusing you of trademark infringement will likely have an attorney on his side, so it's important that you retain your own legal representation.

While dealing with an infringement claim, it's important you refrain from making statements that are:

  • Misleading
  • False
  • Improper

Being truthful will protect you if there is additional legal action resulting from the claim.

If your eBay listing is removed and you own a trademark registration or you legally purchased the items you are selling, you will have strong grounds for a counter case. It's also important to remember that too many claims against your eBay profile may result in your account being suspended, denying you a valuable source of income.

Your attorney should be able to help you decide if you are protected by the “first sale” doctrine. The attorney also should be able to help you register a trademark so that you are protected against infringement claims in the future.

Notice of Trademark Infringement on Your Website Domain Name

In the event you receive a notice of infringement on your website domain name, there are some general questions to ask to determine if the notice is valid.

  • Is your domain name confusingly similar to the trademark?
  • Is your website being used to market or sell the same types of products or services?
  • What date did you register your domain name?
  • Did you register it in good faith and have a legitimate reason to register it?
  • Is your domain name used to market or sell a product or service that differs from the one with the registered trademark?

If you need help dealing with a trademark infringement notice, you can post your legal needs on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.

What to Do If You Receive a Trademark Infringement Notice

Receiving a trademark infringement notice can be alarming, but it’s important to approach the situation methodically:

  • Do Not Ignore the Notice: Failing to respond can result in a lawsuit, account suspension, or other legal action. Respond within the timeframe specified in the notice.
  • Understand the Allegations: Carefully review the notice to understand the specific claims of infringement. Look for information on the trademark owner, the trademark in question, and how your use allegedly infringes upon their rights.
  • Seek Legal Advice: Consulting with an attorney who specializes in trademark law is crucial. They can help you assess the validity of the claim, identify potential defenses, and develop an appropriate response strategy.
  • Consider Settlement Options: In some cases, it might be in your best interest to settle the matter out of court. This could involve agreeing to stop using the trademarked term, paying a licensing fee, or other terms that both parties agree upon.
  • Prepare for Possible Litigation: If settlement is not an option and you believe the claim is unfounded, be prepared for the possibility of litigation. Your attorney can help you build a strong defense, whether it’s based on fair use, non-infringement, or another legal argument.

It’s also important to remember that trademark disputes can be complex and costly, so having a clear understanding of your position and legal options is vital to protect your business.