When you find your product listed on platforms like Amazon or Temu by a seller you have not authorized, the instinct is to act quickly. In many cases, that instinct is right. But the appropriate enforcement response depends on a threshold question: Is the seller offering a counterfeit, or are they reselling your actual genuine product?
Those two scenarios can look similar on the surface and appear on the same platform in adjacent listings. But they raise very different legal issues, and the enforcement strategies for each are distinct.
Start with the evidence
Before any legal action, the priority is to document what you are dealing with. Take screenshots of the listing and note the seller information, pricing, and product description. If you can, make a test purchase. What arrives tells you considerably more than the listing alone. Packaging condition, labeling, product quality, and what comes inside the box are all relevant. Work with your trademark attorney through this process to make sure the evidence is documented properly from the start and can be used if litigation becomes necessary.
Scenario one: Counterfeit product
If your test purchase confirms the product is a fake, you are likely facing a trademark infringement and counterfeiting situation. The seller is using your brand name, or a close imitation of it, to sell a product that is not yours. That is a violation of federal trademark law (the Lanham Act), and depending on the scope of the counterfeiting, you have several options:
- Cease and desist letter. If you can identify and contact the seller, a written demand is often the first step. Putting the seller on notice that you have evidence and that legal action will follow if they do not stop resolves a meaningful number of situations without ever going to court.
- Platform takedown. Both Amazon and Temu have brand-protection mechanisms to remove infringing listings. A takedown notice, filed directly with the platform, can be effective when the evidence is clear and does not require any cooperation from the seller.
- Federal trademark infringement lawsuit. For larger-scale counterfeiting operations, a federal lawsuit may be the right path. It is a more involved process, but it allows you to seek injunctive relief, damages, and, in certain cases, an award of attorneys' fees.
- Schedule A lawsuit. This specialized form of litigation is built for situations where you are not dealing with one counterfeiter but a large number of independent sellers offering materially similar knockoff products. In a Schedule A case, the defendants are listed in a schedule attached to the complaint, allowing the brand to pursue many infringers in a single proceeding. It can be an efficient approach in the right circumstances, but it is not the right tool for every counterfeiting situation. Specific factual and legal predicates should be in place before pursuing this route.
Brands contending with dupes and look-alike products face a related but distinct set of trademark questions, one where the product mimics yours without necessarily reproducing your trademark.
Scenario two: Genuine product, unauthorized resale
This scenario is more nuanced, and brand owners are sometimes surprised to learn that it does not always give rise to a straightforward legal claim. Grey market resale, the resale of a genuine product by an unauthorized seller, is not automatically actionable. Under the first sale doctrine, a buyer who has lawfully acquired a product may generally resell it without infringing the trademark. The analysis turns on the specific facts.
When investigating these situations, the questions that matter include: Is the packaging intact, or has it been opened? If the seller represents the product as new and sealed but ships an open or repackaged unit, that matters legally. Has the warranty been altered or voided? Is there anything in the seller's advertising that implies a formal relationship or authorization by your brand that does not exist? Misleading consumers about the nature of the resale is a separate basis for a claim.
Tracing the supply chain is also an important step. If someone is reselling your genuine product, it reached them through some channel. You may have a distributor or wholesaler in breach of their distribution agreement with you; identifying a breach by either can open up contract-based claims alongside any trademark analysis.
Counterfeiting and unauthorized resale enforcement depends on the facts
Enforcement in this area is not a one-size-fits-all process. The options available to a brand facing a large-scale counterfeiting operation are different from those available to a brand dealing with a single seller reselling genuine product through a grey market channel. The starting point is always the same: gather the facts, preserve the evidence, and understand exactly what you are dealing with before deciding how to respond.
Our Copyright, Trademark & Brand Litigation attorneys at Nixon Peabody work with brand owners on these issues regularly, including on behalf of some of the most recognizable consumer brands in the marketplace. Each situation is different, but getting that initial factual picture right makes every enforcement strategy that follows more effective.