Cease and Desist letters - Vorys, Sater, Seymour and Pease LLP
Hello,
I’ve been reselling products for nearly 5 years now. The first time I received a cease and desist letter I immediatly took down my listing and researched my rights. In my research and also talking to a lawyer I found that you have the ‘First Sale Doctrine’ which from my understanding says that you can sell whatever you want as long as it’s materialisticly the same product from the manufacturer.
With that I reopened my listing and did not respond to the C&D letter. Nothing happened and I continued to sell. Over the past years I’ve received quite a few and I’ve noticed that some come from thys company:
Vorys, Sater, Seymour and Pease LLP
I never acted on anything in the letter and nothing has ever happened either. I recently received a new one from this firm. This time they have managed to get my personal name, my address, business address and also my email address that is connected to my seller account. They sent the letter to my email and also my mailbox.
Do anyone have experience with this type of C&D letter?
68 replies
Seller_Erq6PnWozF6Wy
All my products are sourced from authorized distributors.
Seller_i3DcETKK41A76
If you do a search for ‘Vorys’ on this forum you will see multiple posts about sellers getting letters from them and how they handled it.
The letter likely has a laundry list of reasons why you cannot sell them. Where you sourced the product is not relevant to the rights owner in some cases. For example, Amazon requires full product warranties to be listed as ‘New’. However, some of the IP Owners that use this law firm have modified their product warranties to only be valid if sold through ‘Authorized Resellers’. So, regardless of where you sourced your inventory, if you are not an authorized reseller, then those units do not have a product warranty and thus cannot be sold as ‘New’ on Amazon.
You have a few options:
- Ignore and continue to sell. Depending on how much volume you are doing with this brand, you may find an IP complaint filed with Amazon which could cause you issues with Amazon
- Remove and relist as ‘Used’.
- Reach out to the manufacturer and work on becoming an authorized reseller.
The question is not whether you have a legal right by law to sell it (First Sale Doctrine). The question is 'Do you have a legal right by Amazon to sell as New? That answer is no if the product is void of its warranty. That will get you suspended if reported to Amazon.
Do some research on the product warranty with the brand(s) in question. This should give you more insight into what options are best for you.
Seller_3N7yVnTXPzLkL
There are reasons that IP lawyers bring actions in spite of the First Sale Doctrine.
It is not absolute.
It does not prevent them from filing a lawsuit.
Most of the targets do not sell enough of the product to make it worth paying the legal fees to contest a lawsuit.
Seller_Erq6PnWozF6Wy
There is no warranty offered by the manufacturer other than a 30 day return policy, which is the same return policy I have on my seller account as well. These are health supplements that all comes sealed and sold in the same condition. So by Amazon’s standards it looks like I am cleared(?) I think the law is important since the threat is a lawsuit.
Seller_UWUiBvmRG1TYb
There are three separate conversations that are being had around this topic:
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Are you legally allowed to sell these products? - Almost always yes, but this is rarely the most important question. In addition to the considerations below, there are limits as to how you can use their trademarks, what you can say in advertising, etc.
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Can you sell these products as new on Amazon? - sometimes yes, oftentimes no, for the reasons pointed out by @MAV-DAK
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Can someone make your life hell, even with a flimsy case? - Absolutely, which is the point that I believe @Lake was making. If you’ve got a big company coming after you, it’s less important to have the technical legality discussion in your head and more important to understand the pragmatic implications. Do you have any intent of spending tens or hundreds of thousands of dollars to fight to sell this particular product? If not, figuring out your exit strategy is probably a better use of your time and energy than discussing the academic merits of a legal argument. That doesn’t mean you need to dump your inventory and run away just because of a letter, but don’t pretend that a lawsuit is no threat. For business owners, every lawsuit is a loss. Whether you win or lose the case just determines the size of your loss.
Seller_Erq6PnWozF6Wy
Some good points have been raised here. Appreciate your inputs.
I just came across this article by Rosenbaum. An lawyer that works with Amazon sellers:
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Moderator Edit (Jake@SellerSupport): External URL Removed
Seller_PGxK7AA3GfFxs
So if you received this email/letter do you ignore it or you take your active listing off?
Seller_UMhS2Rji7mJ8P
Wouldn’t my business insurance cover any law suit if a manufacturer actually filed suit against me? I am a authorized retailer for the product I am selling online. The manufacturer just does not know it is me that is selling their products. Called liability insurance?
Seller_exvKraMq7bxjL
video games do not have warranties, this law firm is full of it.
There is no material difference in the product being sold.
Seller_m0R09CojYBEn8
Vorys is a Trademark Bully who uses cease and desist letters as a fishing expedition to obtain discovery, threaten 3rd party sellers and subdue them into submission and keep 3rd party sellers, protected under the “right of first sale doctrine” from legitimatly selling products on Amazon. Vorys wants you to believe you have done something wrong when you have actually done nothing wrong. Their baseless threats are mesnt to intimidate and scare small sellers because Vorys is banking on these sellers not being able to afford legal counsel and so they just “cave in” to the Vorys “bully” and stop selling the defined item(s). You have no obligation to respond to Vorys and you do not have to tell them or prove to them where you source your products. These are “trade secrets” as long as the products are being sourced legitimatly. If they want to file suit against you, the burden of proof is on them as to proving their baseless allegations. If you do not disclose to Vorys yoir supply sources, the burden just becomes harder for Vorys to prove their trademark infringement nonsense.
If you do want to respond, here is what you tell Vorys, or any other trademark bully:
“Received your cease and desist letter. It is baseless and constitutes trademark bullying and is a “fishing expedition”. You can take yoir fishing expedition and trademark bullying tactics and shove them up your a… Do not contact me again unless you have a court order. I will provide your cease and desist letter to the press and media so other sellers can become educated on your bullying tactics.
Also file a grievance with the respective State Disciplinary Counsel against the attorney who sent you the threatening letter. If Vorys Lawfirm, then most likely the letter originated from their Cincinatti, Ohio office so the Ohio Supreme Court Disciplinary Counsel is where you will send your complaint. Be sure to send copy of cease and desist letter with grievance.
Send a copy of the trademark bullying letter and file a complaint with the State Office of the Attorney General in your state you reside. The Attorney General will assign you a case number. You can supplement this case number will additional evidence, letters or lawsuit paperwork you may receive. Just be aware that your filings with the AG are subject to open records requests and will not be privileged.
Send a copy of the trademark bullying letter and file a complaint with the State Governor in your state you reside.
Send a copy and file a complaint with the United States Patent and Trademark Office and ask the USPTO to invalidate and rescind the trademark rights for the respective company because they are trademark bullying sellers, like you, and abusing their trademark rights for purposes they were not intended.
File a complaint with the US Dept. of Justice under unfair trade practices, antitrust, Sherman Act and RICO statutes.
Send copy to all media and press that you can.
In the event the trademark holder does file a baseless and frivolous lawsuit agsinst you, then send a copy of lawsuit to the State Attorney General where you live. They will most likely provide you free legal counsel and will handle and defend baseless and frivilous lawsuit for you. You will also have grounds for malicious prosecution against the plantiff. Also file a grievence with the Bar or Disciplinary Council against every attorney listed on the lawsuit in the respective state(s) they are operating within.
All the above info assumes you legitimately sourced your products and are protected under the “right of first sale doctrine”. The above info will not help you if you are actually infringing upon a trademark or are selling counterfeit products.
