ASL Success Story: Reinstated after an IP Suspension
We had a client who received 2 intellectual property complaints: one was a copyright complaint and the other was a trademark complaint.
We followed the most basic step that Amazon suggests to every seller: reach out to the complainant first. We contacted the complainant on behalf of our client as their legal counsel and requested the basis of the complaint.
Based on the information we received from the complainant, we did some research. We then informed the complainant that consistent with Nominative Fair Use and the First Sale Doctrine, our client simply offered for resale authentic products under the exact same condition as received from the manufacturer. As such, Amazon customers would receive the products they expect and there would be no damage to the goodwill or reputation of the company’s mark.
The Lanham Act is the federal trademark statute of law in the United States which prohibits certain activities including trademark infringement, trademark dilution and false advertising. Under both the First Amendment and the Lanham Act, it may be permissible to use or reference another’s trademark if it is being used for non-commercial purposes.
Nominative Fair Use is a permissible use of another’s trademark when it is used as a reference to describe the other product, or if it is used to compare it to their own product. In most instances, this applies when a company is comparing their product to that of another. The courts have allowed this when the trademark is “ the only word reasonably available to describe a particular thing” or so long as it is being used for comparative purposes, that it does not disparage the competitor, or make claims that are inaccurate or harmful to the reputation of this other company.
First Sale Doctrine states that you can buy and sell anything you want without the manufacturer’s permission, but when you resell it to the consumer, the product must match the condition that it is received in when purchased from the manufacturer.
We had a very basic exchange of communication with the complainant, a change of documents and we obtained retractions from the complainants. We appealed this to Notice-Dispute and they processed the retraction and the ASIN was successfully reinstated.