Infringement Claim for Compound Word that existed in the listing but with a space


#1

We had an infringement claim filed weeks ago by the trademark holder of a compound word (“miniscraper”) . We had a small scraper and had the term in that existed in our listing with a space (“mini scraper”). Amazon still removed the listing because of infringement - even though the trademarked term (without the space) did not exist in our listing.

All we’ve received from Amazon are appeal denials and form letters saying we must prove the product is legitimate. No response from the IP infringement filer despite multiple explanations - so the listing is still inactive.

The fact that someone can file a claim like this and then not respond should be a huge concern to every Amazon seller. Can you imagine if someone were to trademark “miniscrewdriver” and then filed infringement notices against anyone with “mini screwdriver” in the listing?

Any suggestions on approaches to this type of situation? Has anyone tried to go after the infringement filer in cases like this?

Very frustrating and concerning!


#2

Try reading this. It may be helpful.


#3

You can dispute the complaint by e-mailing notice-dispute@amazon.com.

However, make sure to attach the proof of authenticity in a form of invoices.


#4

Thanks - very helpful!


#5

I don’t have enough information about trademark law to know if adding a space makes it a legally new name, but my guess is no.

If you go to the miniscraper homepage there’s news information about their trademark and their efforts to get it secured. I’m not sure what you’re writing to them about, but if it’s about the space, they’re probably not interested.


#6

Quibbles like this get resolved between the parties or go to court.

Amazon wants no part of this dispute.


#7

This isn’t an authenticity dispute.

A company owns a trademark and the OP is selling the same category of products with a very slightly changed name.

This like bottling your own soda and selling it as “Cocac-Ola.” The issue isn’t where the soda comes from.


#8

Bogus infringement complaints can be also disputed, by e-mailing notice-dispute@amazon.com.

I have successfully done it numerous times.


#9

Why do you think this is a bogus infringement case?

This is an actual trademark held by a current manufacturer of the goods, with some history, that has its own Amazon store and listings. (I checked their site and searched the trademark database.)

The OP’s company is making their own version of those goods, using the trademarked name (yes, including a space).

The OP’s argument is that they should be allowed to continue doing that because they have a space in the name. It doesn’t sound like a very good argument.


#10

The claim isn’t necessarily bogus, but the trademark in question (Miniscraper) is really weak and likely unenforcable.

Trademarks fall under several major categories:

  • Fanciful - An invented word that has no meaning other than the trademark (e.g. Pantene, Exxon, Pepsi, etc.)

  • Arbitrary - A word that exists and has its own meaning that is unrelated to the product protected (Apple computers, Delta for air travel, etc.)

  • Suggestive - These marks indicate something about the product being protected. Because of this, the strength of the mark is deteriorated relative to the first two. Microsoft, PlayStation, and Burger King are examples here.

  • Descriptive - As it sounds, these describe the goods being sold. These are very weak and generally require wide recognition of a singular meaning in addition to being registered in order to be protected. One example that comes to mind is the Hot-n-Ready pizza from Little Cesar’s. They could probably prevail in a lawsuit against someone using the words Hot and Ready for ready-to-go pizzas now, but that’s because of the advertising and wide recognition, not the Federal registration of the mark.

The argument that can be made is that Miniscraper is nothing more than merely descriptive of the product - a mini (small) scraper. Just because the brand was able to obtain a Federal trademark doesn’t mean that they now own the words mini and scraper. In fact, I think a strong argument can be made that this mark is essentially worthless.

They went after the OP on Amazon because it was basically free to do. OP just needs to either draft or have his lawyer draft something to Amazon to say that they are not infringing on any valid IP and that they take full responsibility for any legal issues around this.

At that point, Miniscraper can either sue or not to try to enforce their mark. I think it wouldn’t go well for Miniscraper, but this might be a case of legal chicken… who’s willing and has the funds to drag this out the longest?


#11

Idon’t thinkthat theOP willprevail herebecause peoplecan recognizewhen twowords looklike one.


#12

Call it MicroScrapper


#13

Thatis toosmall adifference.


#14

I hear you.

I tried to register Fabactive, I was rejected because FABB Activewear already had a trademark. They actually go by FABB. They are not the same, but they are the holder of the keys.


#15

I am by no means a lawyer so…

A confusingly similar ripoff of a trademark can be in violation of the law. If a reasonable consumer may be confused by your wording, it would be considered in violation. “mini scraper” vs “miniscraper” would probably be very confusing to a reasonable consumer. Consider if you did “Nike” vs Ni ke"

Simply adding a space like this would likely fall under causing confusion and be an infringement of the mark.

That said, the best time to have fought this would have been during the opposition period but that time has long passed.

Given the very descriptive nature an non-uniqueness of the mark, you might be able to fight it still (though again I am not a lawyer). However, assuming you could and even if you knew you would win, the problem is these look like cheap items and it probably will not be worth your time or expense to fight it.

Personally, I would find as many synonyms to use in the mean time and move on, as bogus as this mark may seem.

What pisses me off about this all is that it would be like trademarking “orangesoda”.


#16

There’s two separate issues:

  1. Whether the trademark owner can really prevent others from using the words “mini” and “scraper” to describe a small scraper.

  2. Whether the OP can get Amazon to let him back on the platform with that listing.

Those are two separate issues, with #2 being the immediate concern. My impression is that Amazon immediately takes down listings when there is an IP complaint without passing judgement on its validity. They’re just trying to keep themselves from becoming a deep pocket target for a lawsuit.

But along those same lines, I’m under the impression that if a letter in proper legalese is sent to them disputing the IP complaint, they’ll recuse themselves from the issue by letting the listing back on (though they may do a cursory glance to makes sure they’re not letting back on something that’s obviously infringing).

From there, the issue becomes one of IP enforcement for the trademark holder. The holder has to sue the OP to get him to stop using the mark, vice-versa.

I’m also not a lawyer, but I do have a bit of experience with IP law, both trademarks and patents. I don’t have any direct experience dealing with Amazon on this issue, just piecing together other reports I’ve read on the forum.


#17

Correct.

Issue #1, is it worth fighting for something that is worth $0.50/unit or less? Probs not.

Issue #2, doesn’t sound like OP has been kicked off the platform entirely so he just needs to reinvent his listing and avoid these words being used together. I would just assume the old listing is junked and he needs to start again from scratch.


#18

I happened to run across this today:

“Classic” fair use comes into play when the mark at issue has a clearly understood descriptive meaning; the rationale is that the trademark owner should not be permitted to deprive competitors and others of the ability to use words that are legitimately needed to describe their products or services

So if you really want you probably could fight this under the “fair use” theory, though again this would probably be a battle not worth fighting for something so inexpensive.

You MIGHT be able to try to argue fair use with Amazon though Amazon probably would not want to get involved in a fight like this.


#19

Trademark protections are not spelling-specific. You are in violation if your wording can be misinterpreted as representing the trademarked product For example, you can’t call your soft drink Pebsi-Cola even though Pebsi is not trademarked by Pepsi.

Unfortunately you are in the wrong here. Don’t claim innocence in your appeal. Your best chance is to claim a simple mistake that will never happen again. Then call your item a micro-scraper or a “hand-sized scraper” or something similar.

But I suspect the best thing is to just withdraw it then rebrand and relist it correctly with proper descriptions.


#20

Have you tried reaching out to the trademark holder to negotiate their retraction of the claim to reinstate your listing?