How to counter claim on trademark complaint


#1

I have one trademark complaint, and one listing got removed. I have sent emails to notice-dispute@amazon.com with their generic reply again and again. Then I sent the counter claim email to counter-notice@amazon.com twice today, both with same reply as following:


Thank you for your e-mail. The counter-notice procedure only pertains to notices of copyright infringement submitted pursuant to the Digital Millennium Copyright Act (DMCA). The notices relating to the items identified below were claims of trademark infringement.

We ask that you please resolve this matter directly with the party that made the original claim. Please find this party’s contact information below:

xxx@xxx.com

If you are able to resolve this matter with the claimant, please have them contact us at notice-dispute@amazon.com to retract their notice. If you are unable to resolve and wish to appeal the matter, please also contact notice-dispute@amazon.com and provide evidence to support your appeal.

Regards,

Amazon.com DMCA Counter-Notice Team


The counter claim email is similar to https://sellercentral.amazon.com/forums/t/only-took-me-2-5-years-6-appeals-and-4-four-test-buy-to-get-ipv-reversed/295939

Is there any advice on how to counter claim on trademark complaint?

Thanks!


#2

I posted two sample letters - one mentions copyright and DMCA in the text and cites US Code, the other one for TM does not mention TM or USCode. You need to use the TM one, its a couple pages in.


#3

Please get an IP lawyer to write a simple counter-claim letter for you, even if it cost you $200. That will put Amazon on notice that you are serious about this and are willing to fight it out legally. The lawyer will likely want to send multiple notices out in certified mail to their legal department, and demand to send it to the original complainant’s lawyer.

In most cases, these guys don’t even have a proper US IP lawyer. If they are bluffing, call their bluff. It may be the best $200 or $300 you spent when you watch their case fold like a cheap suit. (pun intended).

  • Hope this helped, and Good Luck!

#4

I used this format with my own details:

RE: Mistaken Removal

Dear Trademark Agent,

My ASIN BXXX was removed by you. I have a good faith belief that this material was removed or disabled
in error as a result of mistake or misidentification of the material. I declare that this is
true and accurate under penalty of perjury under the laws of the United States of
America.

Toogoo-top.com62 claims are invalid, libelous, and a criminal act of perjury. The product represented by ASIN is a generic product that is not trademarked. This is clearly shown in the product picture.
The product picture is not the intellectual property of Toogoo-top.com62, it is a public domain image contributed by myself.
Toogoo-top.com62 has a history of submitting false infringement claims against me and other sellers on Amazon.
Toogoo-top.com62 has a history of abusive listing practices on Amazon.
Toogoo-top.com62 operates multiple seller accounts on Amazon in violation of Amazon policy (accts GO CAROL and CLEVER EDGAR).

For the purposes of this matter, I consent to the jurisdiction of the Federal District
Court for the judicial district in which I reside. I also consent to service of process
by the person providing notification under Section 512©(1)© or that person’s agent.
However, by this letter, I do not waive any other rights, including the ability to pursue an
action for the removal or disabling of access to this material, if wrongful.

Having complied with the requirements of Section 512(g)(3), I remind you that
you must now replace the blocked or removed material and cease disabling access to it
within fourteen business days of your receipt of this notice. Please notify me when this
has been done.

I appreciate your prompt attention to this matter. If you have any questions about
this notice, please do not hesitate to contact me.
Sincerely,


#5

Haven’t tried that before. My blocked ASIN wasn’t performing really good. Just tried to find an low cost way to fight the complaint. I will try your idea if I really need to fight hard against the complaint. Thanks!


#6

You need to use the above letter but remove these parts
“I also consent to service of process
by the person providing notification under Section 512©(1)© or that person’s agent.”

“Having complied with the requirements of Section 512(g)(3), I remind you that
you must now replace the blocked or removed material and cease disabling access to it
within fourteen business days of your receipt of this notice. Please notify me when this
has been done.”


#7

Thank you for your update. Have you ever sent the counter claim email to copyright@amazon.com?

I will also fax to them. Is the fax No. (206) 266-7010?


#8

You would not send a TM CC to copyright@amazon.com.
Yes I have faxed… generally I follow this pattern…

Email
Email
Email
Email
Email
Email
Fax
Email
Certified Mail
(repeat if needed).
There is NO limit to how many times you can appeal an IPV as long as you are not abusive (don’t burn up their fax server or send obscenity filled emails about how retarded they are, even if it is true.).

When they deny CC by email, just respond with…
Please escalate and review attached documentation.

Oh it is important - do not just send them an email with that letter verbage - also attach a PDF file of the letter with your signature. I just scanned my signature once, and I insert it into the word .docx and then save as PDF.

You have to pretty much make it clear, politely, that you will not just give up. They know that 99% of people who counter claim will give up after one try.


#9

Thank you for the detailed information:smile:


#10

Amazon should have a policy wherein if you file a false IP infringement claim, you get your account shut down the same amount of time your competitors listing was shut down due to your claim. That would put a stop to all this IP nonsense.


#11
  1. This is not a criminal matter. Its civil.
  2. I wish i could see the trademark you are using and the trademark they claim you are infringing on. It would clear it up a bit. I would bet that you are infringing. the whole “confusingly similar” allegation is probably in play here.

Perjury only applies to court proceedings.


#13

Yea but the OP wants to “Fight” these IP claims and not back down from them. Your email would work if they were genuine complaints and he intended to comply.


#14

Ahhhh …Okay, guess I mis-read something.
Thanks for the correction.
Just deleted my post …don’t want to confuse anyone.


#15

The trademark they claimed is Velcro. The title of the product is Tactical Velcro Patches of …And after researching on USPTO, there is no registered trademark of Velcro on product of embroidery patches.

The listing is with brand of XXX(nothing similar to Velcro)


#16

Wait wait wait, @Paul-JCP–you are trying to counter a claim of trademark violation against Velcro?

But you are saying that your product listing did not include “Velcro”?

I’m confused–TIA for clarifying!


#17

I have re-read your posts. It sounds like you are saying that the trademark complaint was against your use of the trademarked word Velcro in your product title for the generically-branded item that you either manufactured and/or sell.

It is highly unlikely that your generic product sourced and licensed its hook-and-loop feature directly from Velcro and/or established a licensing agreement with them that extends to your Amazon listing.

You can certainly continue to challenge the claim or request that the complaint be withdrawn, but regardless, it appears that you have in fact infringed upon the Velcro trademark.

I’m wondering if your product was similar to this currently suppressed listing:

image


#18

A forum search on the word “velcro” comes up with 50 topics involving trademark and patent violations.
Velcro Industries BVBA is the rights owner. US and International trademarks apply.


#19

Im not going to go into all the uses that Velcro Industries has and why you are infringing. All i can say is that this is a slam dunk for them. Note: “fabrics and textiles and substitutes therefor” VELCRO is a trademark. Absolutely “Confusingly Similar” End of story. Sorry.

Word Mark VELCRO
Goods and Services IC 024. US 042 050. G & S: fabrics and textiles and substitutes therefor; namely, woven, molded or extruded synthetic material having a surface of hooks and woven synthetic material having a surface of loops. FIRST USE: 19560000. FIRST USE IN COMMERCE: 19560000
Registration Number 1705079


#20

Suggest using “Easy release feature to remove and re-apply”

“Hook n’ Loop” has already been applied for as a trademark… You cant use that either.


#21

Where is a link to the letter for TM dispute?