Selling counterfeit products on Amazon is unlawful in the U.S. Counterfeiting is a violation of U.S. trademark laws. Counterfeiting is selling a product on Amazon that falsely claims or is falsely labeled as a particular brand when it is not. Many counterfeits are obvious fakes, but even if the product is of suburb quality, it is still a counterfeit if it is falsely labeled. Not only is counterfeiting unlawful, but listing counterfeit goods on Amazon is a violation of Amazon’s terms and conditions of service. In this article, the top-rated Amazon Lawyers and Amazon Litigators at Revision Legal discuss some of the steps needed to sue companies that counterfeit your brands on Amazon. For a consultation, call us at 231-714-0100 or 855-473-8474. We have extensive and proven experience with complex trademark and counterfeiting litigation.
How to Sue Counterfeiters
Lawsuits against companies who counterfeit your brands on Amazon are filed in Federal court. Like all lawsuits, the case is initiated by filing a Complaint. However, given the nature of counterfeiting, several other legal documents and pleadings must be prepared — in advance — to be filed along with the Complaint. Given that counterfeiters are essentially criminals, it is important to initiate litigation with as much secrecy as possible under the rules of civil procedure. This prevents the specific targets of the counterfeiting lawsuit from destroying evidence, hiding, and giving warnings to co-conspirators. Thus, among the initial filings, the following will be needed:
- Request to the court that the filings and proceedings be sealed
- Request that all parties be barred from discussing the proceedings with third parties
- Request for a temporary restraining order (“TRO”)
Things will move quickly after the initial filings, so be prepared. The TRO request must be heard by the court within the first 10 days. A TRO request is not about recovering money damages, but about asking the court to issue an Order commanding various actions. Examples include ordering the counterfeiters to stop selling fake goods, removing Amazon listings, preserving evidence, allowing the seizure of counterfeit goods, and more.
Note that it often takes one to three (or more) weeks to deliver copies of the initial complaint (and other filings) to the target(s) of the lawsuit. Thus, the first hearings before the court often take place without the participation of the counterfeiters. This is allowed under the rules of civil procedure. Federal counterfeiting TROs are often granted, but because the counterfeiters are generally not present for the proceedings, the courts require compelling evidence. Thus, advance planning is required.
Advance Planning for Your Counterfeiting Lawsuit
The key to any counterfeiting lawsuit is proving the counterfeiting. This necessitates what are often called “test purchases.” That is, if you suspect a company is counterfeiting your brands on Amazon, you must buy a few of the products to test whether they are, in fact, counterfeit. See here for an NPR media article about Nike’s lawsuit against StockX. Once you have your test products, you will need an extensive evaluation of the test products, and then you will need legally sound and admissible expert opinions and reports showing why and how the products are counterfeits. The test products, opinions, and expert reports will be foundational evidence for your counterfeiting lawsuit.
Contact the Amazon Counterfeit Attorneys at Revision Legal