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

For more information, contact the experienced Amazon Counterfeit Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

Federal Law Governing Trademark Counterfeiting

Trademark counterfeiting in the United States is governed primarily by the Lanham Act, 15 U.S.C. section 1114(1)(a), which prohibits the use of a counterfeit mark in connection with the sale, offering for sale, distribution, or advertising of goods or services. A counterfeit mark is a spurious mark identical to, or substantially indistinguishable from, a registered trademark. Counterfeiting is also a federal crime under 18 U.S.C. section 2320, which provides for imprisonment of up to 20 years per offense and fines of up to $15 million for organizations.

Amazon Brand Registry and Project Zero

Before resorting to litigation, brand owners who sell on Amazon should enroll in Amazon’s Brand Registry program. Brand Registry gives trademark owners tools to report suspected counterfeit listings and have them removed. Amazon’s Project Zero goes further, allowing enrolled brand owners to directly remove counterfeit listings without submitting a report. However, sophisticated counterfeiters create new seller accounts faster than listings can be removed. Where counterfeiting is persistent and causes significant harm, federal litigation is often the most effective remedy.

Damages Available in Counterfeiting Litigation

The Lanham Act provides exceptional remedies in counterfeiting cases. Under 15 U.S.C. section 1117(b), a plaintiff who proves intentional use of a counterfeit mark is entitled to treble damages — three times the plaintiff’s actual damages or three times the defendant’s profits — plus attorneys’ fees. These enhanced damages are mandatory, not discretionary, unless the court finds extenuating circumstances.

For cases where actual damages are difficult to prove, the Lanham Act provides statutory damages under 15 U.S.C. section 1117(c). Statutory damages range from $1,000 to $200,000 per counterfeit mark per type of goods or services. If the infringement was willful, that range increases to $2,000,000 per mark per type.

Asset Freezes and Seizure Orders

One of the most powerful weapons in a counterfeiting lawsuit is the ex parte seizure order authorized by 15 U.S.C. section 1116(d). Courts can authorize the seizure of counterfeit goods, the means of producing them, and the records documenting the counterfeiting operation — all without advance notice to the defendant. Courts can also freeze the defendant’s financial accounts, including their Amazon Seller Central account balances. This prevents counterfeiters from moving or dissipating funds before judgment.

To obtain an ex parte TRO and seizure order, the plaintiff must demonstrate that it would suffer immediate and irreparable injury if advance notice were given, that the balance of hardships tips in its favor, and that the public interest is served by the injunction. Courts in major e-commerce districts — particularly the Northern District of Illinois and the Southern District of New York — frequently grant well-documented applications.

Building the Evidence File Before Filing Suit

The best counterfeiting cases are won before the complaint is filed. Brand owners should:

• Conduct systematic test purchases from suspected counterfeit sellers and preserve all packaging, invoices, and shipping records
• Obtain expert analysis comparing test-purchase products against authentic goods, documenting differences in materials, construction, labeling, and other identifiers
• Capture screenshots of Amazon listings, seller profile pages, and product images — web pages can be altered or deleted
• Preserve records of sales data showing market share lost to counterfeit listings
• Document all prior attempts to use Amazon’s administrative takedown tools and the results

The Amazon litigation attorneys at Revision Legal have significant experience building and executing counterfeiting cases from investigation through trial. Contact us at (855) 473-8474 to discuss your situation.