Patent and Trademark Infringement Question - please help

[bgpro]

Dear Forum Members and Amazonians
I need your help and assistance, please advise in your earliest convenience.
It has been more then 3 years since me and my team started learning all about selling on Amazon FBA. We went a very hard route, we developed our own unique product, went onto crowdfunding platform, ended up raising over 250k, invested all this money into tooling and production, fulfilled all crowdfunding orders, opened our own website, registered trademark, filed for utility patent, filed other international patents. To keep long story short we have invested a lot of our money, time and energy to be where we are at right now. And here is the funny part, three weeks ago, right before Christmas we have finally opened our Amazon FBA account and offered our unique products on amazon.com, all of the sudden the very next day we went live on Amazon, another listing appeared from the seller from China offering the exact low quality reproduction/knock-off (ships directly from China) which he sells at the price that is twice less from our offer. More then that he competes with us on our “trademarked” keyword and his listing on the first place at the moment. We have filed several complaints with Amazon Seller Performance Team with no positive results, they are always replying with unrelated canned responses and did not even read our claims. We are an original inventors of our product, and we hold US utility patent which was approved and published 3 month ago. At this point we are lost and do not know what to do, Amazon is refusing to remove Chinese listing. Please advise what to do, what steps and/or methods can be utilized to remove Chinese knock off from amazon marketplaces

Edited by: Beastgrip on Jan 14, 2016 5:38 PM

[Boardgames4Us]

Dear Forum Members and Amazonians
I need your help and assistance, please advise in your earliest convenience.
It has been more then 3 years since me and my team started learning all about selling on Amazon FBA. We went a very hard route, we developed our own unique product, went onto crowdfunding platform, ended up raising over 250k, invested all this money into tooling and production, fulfilled all crowdfunding orders, opened our own website, registered trademark, filed for utility patent, filed other international patents. To keep long story short we have invested a lot of our money, time and energy to be where we are at right now. And here is the funny part, three weeks ago, right before Christmas we have finally opened our Amazon FBA account and offered our unique products on amazon.com, all of the sudden the very next day we went live on Amazon, another listing appeared from the seller from China offering the exact low quality reproduction/knock-off (ships directly from China) which he sells at the price that is twice less from our offer. More then that he competes with us on our “trademarked” keyword and his listing on the first place at the moment. We have filed several complaints with Amazon Seller Performance Team with no positive results, they are always replying with unrelated canned responses and did not even read our claims. We are an original inventors of our product, and we hold US utility patent which was approved and published 3 month ago. At this point we are lost and do not know what to do, Amazon is refusing to remove Chinese listing. Please advise what to do, what steps and/or methods can be utilized to remove Chinese knock off from amazon marketplaces

There are two considerations.

1. Amazon will enforce counterfeit violations. I expect that this is also the case. You need to do test buys for each of the products that you believe are counterfeits, take images of those products in their packaging compared with yours and can then claim that the seller is sellng counterfeit versions of your products.

Amazon will take down those listings, but you will need to also involve Seller Performance to report those violations.

2. Amazon is not a court of law and does not enforce copyright, patent, or trademarks. You would need to involve an IP lawyer to litigate. That can very expensive and difficult with foreign companies that do not have a true US presence. You may need to check to see if they are registered in the US and are using a US Registered Agent (usually a law firm) which can be used to serve legal documents.

Dave

[bgpro]

Boardgames4us thank you so much for your support and comments

1. Yes, we did test buys, we do have knock off in our office, I can take pictures and compare it in no time if this is what needs to be done in order to remove fake listing, but I believe we need to look in deeper into definition of “counterfeit”. China seller ships direct from China, does not list against my ASIN, does not use my brand name in his listing title, description, and/or his packaging. (He does however uses my trademarked brand name as a keyword) The other words it is the same thing as some Chinese seller would produce exact copy of iPhone, would name it “iChina” and would sell it under brand “Pears” and Amazon would allow this listing to coexist with original Apple iPhone? I do not understand, this is totally unacceptable

2. Seller does not have representative in US, we sent him cease and desist letters several times and he does not care, he did not even responded to our emails

[bgpro]

Okay, how do I properly report counterfeit item to Amazon? Yes we are in close contact with our IP lawyer, and according to him we have two options:

a) Filing Section 337 Complaint with International Trade Commission, it will stop infringed items at the border, as a result Amazon will be forced to remove listing, because it would not be able to fulfill orders

b) Filing litigation case with Chicago Federal Court against Chinese seller, as a result permanent restraint order will be issued by the Court and Amazon will be forced to remove listing

Both option are very time consuming (12-18 month) and very pricey, I do very hope Amazon will read this discussion and will take appropriate actions ASAP

[Boardgames4Us]

Boardgames4us thank you so much for your support and comments

1. Yes, we did test buys, we do have knock off in our office, I can take pictures and compare it in no time if this is what needs to be done in order to remove fake listing, but I believe we need to look in deeper into definition of “counterfeit”. China seller ships direct from China, does not list against my ASIN, does not use my brand name in his listing title, description, and/or his packaging. (He does however uses my trademarked brand name as a keyword) The other words it is the same thing as some Chinese seller would produce exact copy of iPhone, would name it “iChina” and would sell it under brand “Pears” and Amazon would allow this listing to coexist with original Apple iPhone? I do not understand, this is totally unacceptable

If the item looks like yours and you can prove that it is counterfeit, that is all you need to do. Keep the trademark part out of the request from Amazon. Counterfeit is sufficient and adding any IP terms complicates the request.

You might consider a conversation with an IP lawyer regarding options to enforce the IP. It would usually require legal action in absentia and have a claim made against their Amazon account which may not have enough to cover your legal costs.

Dave

[bgpro]

Alright, let me try it, will post results if any

[Boardgames4Us]

Okay, how do I properly report counterfeit item to Amazon?

>
You should get several good examples of the process by searching for counterfeit on these forums. I think those from MAV-DAK looked the most complete.

Generally, you will send a message using Seller Support for Selling on Amazon > Other Issues > Report a Violation.

Also send an email to seller-performance@amazon.com.

Provide your images, the listings (ASIN) and Sellers (Seller Name) in your messages.

Make sure to mention counterfeit and do not mention the IP terms.

Dave

[Doesnt_Matter]

China seller ships direct from China, does not list against my ASIN, does not use my brand name in his listing title, description, and/or his packaging.

I highly doubt a test buy is the way to go if they are not colisting on your branded ASIN. The other seller, by creating a new ASIN, has in effect, a different product. Since you are not Apple, or Rosetta stone, you will need to hire your own attorney. Amazon will do nothing for you here.

>(He does however uses my trademarked brand name as a keyword)
Some categories like home and garden state not to use other brands and trademarks in keywords in the style guide. But how much they will enforce this is questionable. I see images watermarked with website URLs that do not get removed, and I would think diverting traffic would be a greater offense than a keyword infraction.

All the advice you have been given about test buys is for somebody colisting on your branded product. If he ( +does not use my brand name in his listing title, description, and/or his packaging.+) then they have created their own branded product. If this product is a counterfeit of yours, you need to hire legal assistance to stop him just like Apple does for counterfeiters of Iphones.

[bgpro]

It does not matter where seller is selling from, main point is that products are being offered for sale to US consumers. What is the purpose of having US patent then? If this would be the case, anybody would be able to sell iPhone knock-offs, by calling them “iChina” under the brand name “Pears”, but this is not the case, you do not see a single iPhone copycat on Amazon, even so there are plenty of them Alibaba

[bgpro]

Nothing new, the same exact unrelated canned response as always, see below, Amazonians PLEASE HELP, I am original inventor of my product, Chinese knock-off is being offered for sale on Amazon, PLEASE RESPECT MY INTELLECTUAL PROPERTY RIGHTS, i have spent more then three years developing and investing my time and money

---

Hello,

Thank you for contacting us with your concerns. Based on the information you provided, we are unable to remove the items listed at the end of this message.

When a detail page is created, it becomes a permanent catalog page on Amazon.com that will remain even if the creator’s inventory sells out. Other sellers can list their items for sale against the page if their items exactly match the page.

If you believe sellers are listing against pages that do not exactly match their items, please reply with the following information:

1. Amazon.com Order ID of a test buy that confirms the violation (required)
2. A concise description of the differences between the item ordered and the item received (required)
3. The ASIN/ISBN of the item’s detail page and the product title
4. The store or business name of the seller you are reporting
5. Any other evidence that supports your complaint

We thoroughly investigate all reports. For privacy reasons, we do not disclose the results of our investigations, but we will take any further action that we find appropriate.

Thank you again for bringing this matter to our attention.

Seller Performance
Amazon.com

Amazonians PLEASE HELP

[bgpro]

Hello LegoMyEgo
Thanks for your comment
China trademark and patent applications are in pending status

[legomyego]

Amazon might be limited to help you in this case since the seller is not from the states. May I ask if you register your trademark and patent with China government?

Even Apple and some of the well known brands have issues dealing with intellectual property in China. Unlike the US, China have a first register based system. Meaning whoever register the patent, trademark first owns it.

So if you did registered your patent and trademark in China, try contact the lawyer that you use to file your patent and trademark with and ask them to see what you can do.

There are a number of trademark squatters in China and the number keep on growing. That is why the first thing I did when I registered my trademark with USPTO, I also have a lawyer registered in China.

I wish you luck.

[legomyego]

Since you use crowdfunding to raise capital, China are known to scrounge the internet community and crowdfunding sites like kickstarter and registered patent or trademark first in China.

So if you have a good products, be smart and protect your intellectual property.

[flyinghouse]

Hi Doesn’t Matter
Thanks so much for your reply
I am working with IP lawyer and always have been, since the very beginning, there are some very costly and timely remedies available to protect my IP, as I outlined in my previous replies. However I do still very hope that Amazonians will read this post and my issue will be escalated to the higher department, because I am very tired from all those unrelated canned responses from Seller Performance Team.
Dear Amazonians my issue is still not resolved, counterfeit item is being offered for sale on amazon.com and not only. I demanding you to PLEASE RESPECT MY INTELLECTUAL PROPERTY RIGHTS and remove infringed listing as soon as possible

If you want amazon’s attention, you need to contact amazon. If you are seeking help from one of the forum moderators, send him or her a private message.

Barb

[bgpro]

Hi Doesn’t Matter
Thanks so much for your reply
I am working with IP lawyer and always have been, since the very beginning, there are some very costly and timely remedies available to protect my IP, as I outlined in my previous replies. However I do still very hope that Amazonians will read this post and my issue will be escalated to the higher department, because I am very tired from all those unrelated canned responses from Seller Performance Team.
Dear Amazonians my issue is still not resolved, counterfeit item is being offered for sale on amazon.com and not only. I demanding you to PLEASE RESPECT MY INTELLECTUAL PROPERTY RIGHTS and remove infringed listing as soon as possible

[Sage]

Have your lawyer file papers Directly with the Amazon Office of the General Counsel. We have described this in detail in many places on the boards.

File your paperwork at the Top before trying to force any of the lower level support people to act. You can also file a complaint with the FTC report Fakes section that will be forwarded to Amazon. As well as register your Brand with US Customs. This is FREE…

You are spending a lot of time going around in circles rather than fixing the problem with a little reaserch.

[felipemelo]

Any news for this?

[system]