Emergency warning! Many hot-selling products were sued for infringement, affecting sellers on Amazon, eBay and other platforms

Foreign countries attach great importance to the protection of intellectual property rights. Infringement has always been a taboo in cross-border e-commerce, especially for Amazon sellers. At the very least, the listing will be removed from the shelves, and at worst, the store will be closed. However, there are always people who are lucky.

Recently, a large number of sellers have faced prosecution for trademark infringement. In five cases, more than 1,000 sellers' stores have been sued and frozen, involving multiple e-commerce platforms such as Amazon, eBay, and Wish, as well as multiple categories in daily life.

Cross-border infringement has entered a high incidence period, and many stores have been sued!

1. Proextender

It is reported that the brand LEADING EDGE MARKETING has filed infringement lawsuits against a large number of sellers. The case number is 23-cv-21333. The law firm represented by Sriplaw is a total of 1,038 stores have been frozen, mainly involving the word trademark Proextender.

It is understood that the brand Leading Edge is a Bahamian company that mainly produces health products and adult products.

The trademark involved in this case is ProExtender, a brand owned by Leading Edge.

ProExtender is an adult product that has been registered as a word trademark in the 10th category of medical devices. It cannot be used without the authorization of the brand owner, otherwise there will be a risk of infringement.

2. The Busted Knuckle Garage

The plaintiff There, Inc., d/b/a The Busted Knuckle Garage initiated trademark protection, case number 23-cv-1327, represented by Marshall, Gerstein & Borun LLP. Currently, 376 stores have had their loans frozen.

It is reported that Busted Knuckle Garage is an American lifestyle brand that sells a wide range of products, including clothing, garage supplies, home decorations and collectibles. The brand's products are very distinctive, all of which are related to cars, mechanical work and handicrafts , attracting many consumers who are interested in car and motorcycle culture.

(Image source: Busted Knuckle Garage official website)

The text and graphic trademarks registered by the plaintiff cover categories such as daily chemical products, transportation vehicles, furniture, clothing, shoes and hats.

Sellers must take the time to conduct self-inspections, because products that are highly similar to this one have a great risk of infringement.

3. V-WHITE Teeth Whitening Device

The plaintiff SOL STRONG LLC initiated trademark protection, case number 23-cv-2344, and the law firm represented by THOITS.

Sol Strong LLC is an American company whose main product is an oral cleaning and teeth whitening device . Its V-White brand product is a U-shaped ultrasonic electric toothbrush that can automatically clean teeth 360 degrees in just a dozen seconds and is widely welcomed by consumers. Sellers need to pay attention to the registered trademark of this product as follows and avoid using the trademark in the listing.

4.ROKU

The plaintiff ROKU INC. initiated trademark protection, case number 23-cv-02406, and the law firm represented by Thoits Law.

It is understood that Roku, Inc. is a US listed company headquartered in San Jose, California, and mainly produces various digital media players for video streaming. Roku has an advertising business and licenses its hardware and software to other companies. It is worth mentioning that Roku currently occupies the largest market share of smart TV devices (including TVs and set-top boxes) in the United States. Millions of users in Europe and the United States are using Roku's streaming devices.

Sellers must pay attention to this case, which involves U.S. trademark infringement, including word trademarks and graphic trademarks. Most of the infringing trademarks belong to Category 9.

Specifically include:

US trademarks STREAMBAR, ROKU: Class 9: audio speakers, wireless speakers, etc.;

US trademark, ROKU TOUCH: Class 9: TV remote controls, monitors, etc.;

U.S. Trademarks: Class 9: Computer hardware, computer peripherals, etc.; Class 38: Audio transmitted via the Internet and wireless networks, etc.; Class 41: Music, video, television, etc.; Class 42: Technical support services, etc.

Sellers should note that the original design word trademarks and graphic trademarks used by the plaintiff, including models and marks, are not allowed to be used.

5.IMC TOYS

The plaintiff, IMC Toys, SA, initiated trademark protection, case number 23-cv-02373, represented by HSP.

The plaintiff IMC is a Spanish toy company that mainly sells dolls and doll accessories. Its brands include CRY BABIES, BLOOPIES, VIP PETS and BFF, etc. Its products are sold all over the world and are ranked among the top 20 in the industry in Europe.

There are a total of 9 infringing icons involved in this case . Sellers of related products should avoid using them on their listings:

If faced with prosecution for trademark infringement, how should sellers respond?

According to incomplete statistics, there were more than 3,000 infringement cases in 2022, and each case involved more than a hundred sellers. It can be said that most sellers have encountered infringement problems.

As we all know, the international market attaches great importance to the protection of intellectual property rights. If overseas sellers' products are involved in infringement lawsuits, they will face very serious consequences.

However, if a seller faces an infringement lawsuit, he or she still has the opportunity to file an appeal or defense with the Trademark Office through a licensed US attorney.

The seller's registered trademark is still valid. Even if the trademark registration is eventually ruled invalid by the USPTO, the seller's trademark is still protected by US law and cannot be easily infringed by others. The USPTO will also give the trademark owner some time to contact a suitable US lawyer. The seller can provide evidence of trademark use and request a reexamination by the USPTO. The key to whether the trademark can be re-validated, or even whether the Amazon store can be restarted, lies in whether the seller can provide a solid "first use date" and "continuous use" evidence.

At the same time, buyers can also take three measures to minimize losses. First, they can keep the original brand registration and then re-apply to the US Trademark Office with the existing problematic trademark. Second, they can re-apply and register the trademark in a different category and add another trademark to the existing trademark category. Third, they can wait for the original brand registration to become invalid, then apply for a trademark with the same name and category, and then register it.

Compared with other countries, trademark requirements in the United States are very strict and maintenance costs are very high.

It is understood that US trademark registration needs to be submitted by a US lawyer, which leads many sellers to look for agency companies because they do not have the relevant resources.

In order to attract customers, many intellectual property companies adopt free or even ultra-low-cost trademark models, but they are unaware of the huge risks hidden behind them.

If there is a problem with the seller's trademark, the store will inevitably be affected. It is understood that the US Trademark Office's system and Amazon's brand registration are instantly connected. Once the Trademark Office determines that the trademark is invalid, Amazon will cancel the registration, and both the trademark and the store will be blacklisted by Amazon.

The registration time for the American standard takes about 12-18 months, which is a relatively long time span. Sellers must keep their eyes open when applying for trademarks and choose compliant and formal agencies. Never take risks for the sake of temporary cheapness.

Before putting products on the shelves, sellers must conduct a detailed review and evaluation of the products and conduct trademark searches to understand the specific status of the products in terms of copyright, trademarks and patent applications, so as to avoid losses to the store due to product infringement.

American Standard

Infringement