Trademark laws are getting stronger in ways to protect trademark owners from counterfeit goods in online marketplaces. One of the ways a trademark owner can enforce its rights is to send a take-down notice to the online marketplace owner. Here’s a guide on how to do this effectively:
- Identify the Infringement
- Gather Evidence: Document the infringing activity. This includes screenshots, URLs, and any relevant content that shows how your trademark is being used without permission. Evidence is key, especially when the offender learns of your enforcement activity and deletes the content.
- Confirm Infringement: Ensure that the usage clearly violates your trademark rights. Infringement typically involves unauthorized use of a trademark in a way that could confuse consumers about the source of goods or services. It only applies if the potential infringer is selling the same goods or services with which your trademark is registered or used.
- Locate the Appropriate Platform
- Identify the Platform: Determine where the infringement is occurring, such as on a website, social media platform, or online marketplace.
- Platform’s Policy: Review the platform’s policies on trademark infringement. Most major platforms (like Facebook, Instagram, Amazon, Etsy, etc.) have specific procedures and forms for reporting trademark violations.
- Prepare and Send the Take-Down Notice
- Online Forms: Many platforms provide an online form for submitting take-down notices. Complete the form with all required information and submit it through the platform’s official process.
- Email or Mail: If the platform does not have an online form, you may need to send your notice via email or postal mail to the designated legal or intellectual property contact for the platform or website.
- Attorneys or Third-Party Services: Some businesses use legal services or firms to send take-down notices on their behalf, ensuring compliance with legal requirements. There is certain required information that must be include for a valid claim. Experienced professionals will be familiar with the detailed procedures and required documentation to assert a claim.
- Follow Up
- Monitor Response: After submitting your notice, monitor the platform or site for a response. Platforms typically acknowledge receipt and may inform you of the steps they will take or ask for additional information.
- Compliance: If the platform agrees with your notice, they will usually remove or disable access to the infringing content. You should receive confirmation once the action has been taken.
- Handle Counterclaims
- Prepare for Possible Counterclaims: Be aware that the alleged infringer might file a counter-notice claiming their use of the trademark is legitimate. If this happens, you may need to take further legal action to resolve the dispute.
- Consider Legal Action
- Escalate If Necessary: If the platform does not respond or refuses to take down the infringing content, you may need to consider legal action, such as filing a lawsuit for trademark infringement. Consulting with an attorney who specializes in intellectual property can provide guidance on the best course of action.
Conclusion
Sending a take-down notice for trademark infringement requires attention to detail. Consider working with a trademark attorney to ensure that your rights are protected. Having an attorney involved also ensures you are prepared to escalate the matter if that becomes necessary.
Tracy Jong is a Senior attorney at Evans Fox LLP with 30 years of experience focusing her practice in business law, intellectual property and licensing for alcohol and cannabis. Tracy Jong is a member of the New York Bar and is a registered attorney at the United States Patent and Trademark Office. She can be reached at [email protected].
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The content has been prepared for informational purposes only; it should not be construed as legal advice, does not create or constitute an attorney-client relationship, and readers should not act upon it without seeking professional counsel.