Platform-Based Counterfeit Enforcement

Platform First, Litigation Second: Online marketplaces provide powerful enforcement tools that are faster and cheaper than litigation. Amazon Brand Registry, eBay VeRO, and similar programs can remove counterfeit listings within 24-48 hours. Use platform tools first, then escalate to direct legal action against repeat offenders.

Key Platform Enforcement Programs

Platform Program Key Features
Amazon Brand Registry Proactive protections, image/text search, Report a Violation tool, A+ Content, Transparency codes
eBay VeRO Program NOCI takedown forms, seller suspension for repeat offenders, bulk reporting
Walmart Brand Portal IP violation reporting, brand content control, seller verification
Etsy IP Policy Infringement reporting form, shop suspension for violations
Alibaba IPP Platform Good Faith Takedowns, complaint filing, seller penalties

Contributory Infringement - The Inwood Test

While platforms generally enjoy safe harbor protections, they can be held liable under the Inwood Laboratories v. Ives Laboratories (1982) test if they:

Tiffany v. eBay (2010): The Second Circuit held that eBay was not liable for contributory infringement because it had a general knowledge that counterfeits were sold on its platform, but lacked specific knowledge of which listings were infringing. However, once eBay received specific takedown notices, it was required to act. This case established that brand owners must provide specific, actionable information.

Account Suspension Leverage

Marketplace sellers risk significant consequences for counterfeit sales:

Legal Framework for Marketplace Counterfeiting

Applicable Laws

Statute Application Remedies
Lanham Act Section 32 (15 U.S.C. Section 1114) Trademark infringement - use of registered mark Injunction, actual damages, profits, attorney fees
Lanham Act Section 43(a) (15 U.S.C. Section 1125(a)) False designation of origin, unfair competition Injunction, damages, disgorgement
Trademark Counterfeiting Act (18 U.S.C. Section 2320) Criminal trafficking in counterfeit goods Up to 10 years prison, $2M fine (first offense)
DMCA Section 512 Safe harbor for platforms with proper procedures Platforms must respond to valid takedown notices

Building a Case Against Marketplace Sellers

Sample Marketplace Demand Letters

Sample 1: Demand to Counterfeit Amazon Seller
[COMPANY LETTERHEAD] [Date] VIA AMAZON MESSAGING SYSTEM AND CERTIFIED MAIL [Seller Name/Business Name] Amazon Seller ID: [XXXXXXXXXX] [Address if known] Re: Trademark Infringement and Counterfeit Sales - Demand for Immediate Cessation Dear [Seller Name]: This firm represents [Brand Owner], the owner of U.S. Trademark Registration No. [X,XXX,XXX] for the [BRAND NAME] mark, which has been in continuous use in commerce since [Year]. [Brand Owner] has invested millions of dollars building the [BRAND NAME] brand and maintaining strict quality control over all products bearing the mark. COUNTERFEIT SALES We have confirmed that you are selling counterfeit [BRAND NAME] products through your Amazon seller account ([Seller ID]). On [Date], we purchased [Product Name] (Order #[XXX-XXXXXXX-XXXXXXX]) from your Amazon storefront. Our quality assurance team has examined this product and confirmed it is counterfeit based on the following indicators: - [Specific indicator 1 - e.g., incorrect logo placement] - [Specific indicator 2 - e.g., substandard materials] - [Specific indicator 3 - e.g., missing authentication features] - [Specific indicator 4 - e.g., packaging inconsistencies] The authentic [BRAND NAME] [Product] retails for $[XXX]. Your listing price of $[XX] - a [XX]% discount - further indicates these are not genuine products. LEGAL VIOLATIONS Your sale of counterfeit [BRAND NAME] products constitutes: 1. TRADEMARK INFRINGEMENT under Section 32 of the Lanham Act (15 U.S.C. Section 1114) - unauthorized use of the [BRAND NAME] registered trademark in connection with the sale of goods; 2. TRAFFICKING IN COUNTERFEIT GOODS under 18 U.S.C. Section 2320 - a federal crime punishable by up to 10 years imprisonment and $2,000,000 in fines for first offenses; 3. UNFAIR COMPETITION under Section 43(a) of the Lanham Act (15 U.S.C. Section 1125(a)) - false designation of origin causing consumer confusion. DEMAND We demand that you: 1. IMMEDIATELY CEASE all sales, advertising, and distribution of counterfeit [BRAND NAME] products through Amazon and any other channel; 2. REMOVE all listings for [BRAND NAME] products from your Amazon storefront and any other marketplace within 48 HOURS; 3. PROVIDE within ten (10) days a written accounting of: - Total units of counterfeit [BRAND NAME] products sold - Total revenue from such sales - Source/supplier of the counterfeit products - Inventory of unsold counterfeit products 4. DESTROY all counterfeit [BRAND NAME] products in your possession and provide certification of destruction. CONSEQUENCES OF NON-COMPLIANCE If you fail to comply with these demands, [Brand Owner] will: - File an Amazon Brand Registry complaint resulting in removal of your listings and potential permanent suspension of your seller account; - File a federal trademark infringement lawsuit seeking injunctive relief, actual damages, disgorgement of your profits, statutory damages up to $2,000,000 per counterfeit mark per type of goods, and attorney fees; - Refer this matter to federal law enforcement for criminal prosecution. We have documented your counterfeit sales and are prepared to take immediate legal action. Your cooperation now may mitigate the consequences you face. Contact the undersigned within five (5) business days to discuss resolution. Sincerely, [Attorney Name] [Law Firm] Counsel for [Brand Owner] Enclosures: - Copy of U.S. Trademark Registration No. [X,XXX,XXX] - Authentication Report for Test Purchase - Screenshots of Amazon Listing
Sample 2: eBay VeRO Escalation Letter
[COMPANY LETTERHEAD] [Date] VIA EMAIL AND CERTIFIED MAIL [Seller Name] eBay User ID: [seller_username] [Address if obtained through eBay legal process] Re: Continued Trademark Infringement Despite VeRO Takedowns - Final Warning Dear [Seller Name]: This firm represents [Brand Owner], owner of the federally registered [BRAND NAME] trademark (Reg. No. [X,XXX,XXX]). We write regarding your continued sale of counterfeit [BRAND NAME] products on eBay despite multiple VeRO takedown notices. HISTORY OF INFRINGEMENT Since [Date], [Brand Owner] has submitted [Number] VeRO Notices of Claimed Infringement (NOCIs) against your eBay listings: - NOCI #[XXXXX] filed [Date] - [Product] listing removed - NOCI #[XXXXX] filed [Date] - [Product] listing removed - NOCI #[XXXXX] filed [Date] - [Product] listing removed - [Additional NOCIs] Despite these takedowns, you continue to relist counterfeit [BRAND NAME] products under slightly modified listing titles. This pattern demonstrates willful infringement. ESCALATION Your continued infringement after receiving actual notice of [Brand Owner]'s trademark rights constitutes WILLFUL counterfeiting, which subjects you to: - Enhanced statutory damages up to $2,000,000 per mark per type of goods under 15 U.S.C. Section 1117(c); - Mandatory attorney fee award; - Criminal penalties including imprisonment; - eBay account termination and fund forfeiture. FINAL DEMAND You must IMMEDIATELY AND PERMANENTLY cease all sales of [BRAND NAME] products. Within seven (7) days: 1. Confirm in writing that you will not list any [BRAND NAME] products on eBay or any other platform; 2. Provide supplier information for all counterfeit products; 3. Destroy remaining inventory and provide certification. If we identify any additional [BRAND NAME] listings from your account or any account we reasonably believe you control, we will immediately file suit seeking TRO, preliminary injunction, and maximum statutory damages. This is your final opportunity to resolve this matter without litigation. Sincerely, [Attorney Name] Counsel for [Brand Owner]
Sample 3: Platform Contributory Infringement Notice
[COMPANY LETTERHEAD] [Date] VIA EMAIL AND CERTIFIED MAIL [Marketplace Platform] Legal Department [Address] Re: Notice of Contributory Trademark Infringement - Seller [Seller ID] [Brand Owner] Trademark Reg. No. [X,XXX,XXX] Dear Legal Department: [Brand Owner] owns U.S. Trademark Registration No. [X,XXX,XXX] for the [BRAND NAME] mark. We write to provide formal notice of ongoing counterfeit sales by Seller ID [XXXXXXXXXX] and to request [Platform]'s immediate action. SPECIFIC KNOWLEDGE NOTICE This letter provides [Platform] with specific knowledge that Seller [Seller ID] is engaged in trademark counterfeiting. [Brand Owner] has: 1. Submitted [Number] takedown requests for this seller's listings since [Date]; 2. Provided authentication reports confirming products are counterfeit; 3. Documented the seller's pattern of relisting counterfeit goods after takedowns. INWOOD LIABILITY Under Inwood Laboratories v. Ives Laboratories, 456 U.S. 844 (1982), a party is contributorily liable for trademark infringement if it "continues to supply its product [or service] to one whom it knows or has reason to know is engaging in trademark infringement." Tiffany Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010). This letter constitutes specific, articulable knowledge of Seller [Seller ID]'s infringing activity. [Platform]'s continued provision of marketplace services to this seller after receiving this notice may result in contributory liability. DEMANDED ACTION We demand that [Platform]: 1. Permanently terminate Seller [Seller ID]'s account; 2. Freeze and forfeit funds held on behalf of this seller; 3. Provide [Brand Owner] with the seller's identity and transaction records pursuant to [Platform]'s policies or a litigation subpoena; 4. Implement enhanced monitoring for this seller's reappearance under new accounts. Please confirm receipt and your intended action within five (5) business days. [Brand Owner] reserves all rights including the right to name [Platform] as a co-defendant if infringing activity continues. Sincerely, [Attorney Name] Counsel for [Brand Owner] cc: [Brand Owner]

Frequently Asked Questions

To enroll in Amazon Brand Registry, you need: (1) an active registered trademark in the country where you want to enroll (pending applications don't qualify except through IP Accelerator), (2) ability to verify yourself as the rights owner, and (3) an Amazon account. Visit brandregistry.amazon.com to apply. You'll need to provide your trademark registration number, images of your branding, and product categories. Amazon will send a verification code to the trademark correspondence address on file with the trademark office.
An effective VeRO Notice of Claimed Infringement (NOCI) should include: the specific eBay item number(s), the intellectual property right being infringed (trademark registration number, copyright registration, or patent number), the reason for the claim (counterfeit, unauthorized use, etc.), and your contact information as the rights owner or authorized representative. Be specific about why the listing infringes - vague claims may be rejected. eBay typically processes VeRO requests within 24 hours.
Yes, through several methods: (1) File a lawsuit against "John Doe" defendants and subpoena the platform for seller identity and records, (2) Use platform programs - Amazon's Counterfeit Crimes Unit and eBay's VeRO program may share information with brand owners for repeat offenders, (3) Test purchases may reveal seller identity through shipping labels, invoices, or payment records, (4) Some platforms provide seller information in response to valid legal process without requiring a filed lawsuit. An experienced IP attorney can advise on the most efficient approach.
Against counterfeit sellers, you can recover: (1) Actual damages - your lost profits or the infringer's profits from counterfeiting, (2) Statutory damages - $1,000 to $200,000 per counterfeit mark per type of goods, or up to $2,000,000 for willful counterfeiting, (3) Attorney fees - mandatory in counterfeiting cases unless the court finds extenuating circumstances, (4) Costs of investigation and authentication, (5) Injunctive relief prohibiting future sales. Many counterfeit sellers are judgment-proof, but statutory damages awards can be useful for deterrence and platform enforcement leverage.
For persistent relisting: (1) Document the pattern - keep records of all takedowns and subsequent relistings with dates, (2) Escalate within the platform - most have repeat infringer policies that lead to account termination, (3) Request account-level action rather than listing-by-listing takedowns, (4) Send a direct cease-and-desist to the seller documenting the pattern, (5) File lawsuit and seek TRO/preliminary injunction to stop all activity, (6) Request platform monitor for new accounts from same seller. The documented pattern of relistings strengthens your case for willful infringement and enhanced damages.
Amazon Transparency is an item-level tracing service that helps identify authentic products. Brand owners apply unique Transparency codes (2D barcodes) to every unit they manufacture. Amazon scans these codes at fulfillment centers and rejects products without valid codes. Consumers can also scan codes using the Amazon app to verify authenticity. Transparency is a paid service (per-unit fees) but provides proactive protection rather than reactive takedowns. It's particularly effective for FBA (Fulfillment by Amazon) inventory where Amazon controls the logistics.