Is listing an item on a eCommerce store trademark infringement? Even if out of stock?

[Rbl]

What is the name of your state (only U.S. law)?

Florida

Hi guys I received a cease and desist from a brand claiming trademark infringement because I had an item for sale it was a sticker of their logo. The site was freshly made and never actually sold anything really specially the item in question.

Since I've place that item as "out of stock" and is no longer "for sale".

The brand still claims is trademark infringement and request the item/page to be taken down.

The page has the brands name on the title and the image was created by me but it does contain their logo too.

Question:

Is listing an item trademark infringement? Even if is not being sold? (Out of stock)
Is there any work around to keep the page up if it is?
Should I respond to the emails?
Do I need permission to resell their stickers? (Go to a store buy theirs and resell it online)

P.s.
Reason I want to keep the page is for SEO purposes. Even of I can't sell that sticker it the page could rank for the term and get me traffic.

 

[Zigner]

What is the name of your state (only U.S. law)?

Florida

Hi guys I received a cease and desist from a brand claiming trademark infringement because I had an item for sale it was a sticker of their logo. The site was freshly made and never actually sold anything really specially the item in question.

Since I've place that item as "out of stock" and is no longer "for sale".

The brand still claims is trademark infringement and request the item/page to be taken down.

The page has the brands name on the title and the image was created by me but it does contain their logo too.

Question:

Is listing an item trademark infringement? Even if is not being sold? (Out of stock)
Is there any work around to keep the page up if it is?
Should I respond to the emails?
Do I need permission to resell their stickers? (Go to a store buy theirs and resell it online)

P.s.
Reason I want to keep the page is for SEO purposes. Even of I can't sell that sticker it the page could rank for the term and get me traffic.

In other words, you want to use THEIR trademark to generate business for your endeavor. Yes, that's an infringement.

 

[quincy]

What is the name of your state (only U.S. law)?

Florida

Hi guys I received a cease and desist from a brand claiming trademark infringement because I had an item for sale it was a sticker of their logo. The site was freshly made and never actually sold anything really specially the item in question.

Since I've place that item as "out of stock" and is no longer "for sale".

The brand still claims is trademark infringement and request the item/page to be taken down.

The page has the brands name on the title and the image was created by me but it does contain their logo too.

Question:

Is listing an item trademark infringement? Even if is not being sold? (Out of stock)
Is there any work around to keep the page up if it is?
Should I respond to the emails?
Do I need permission to resell their stickers? (Go to a store buy theirs and resell it online)

P.s.
Reason I want to keep the page is for SEO purposes. Even of I can't sell that sticker it the page could rank for the term and get me traffic.

The trademark holder obviously believes you are infringing on their trademark rights so, depending on whose trademark you are using, you either cease and desist - as requested - or you risk an infringement lawsuit. Some trademark holders are not shy about suing and these suits can be costly.

You can have an attorney in your area personally review your site and how you are using the trademark, to see if the trademark holder has a legitimate case against you. There is no way to tell without this personal review if you have infringed and what your odds are of being sued - but I agree with Zigner that it appears that you have.

 

[Rbl]

Wouldn't I be protected by the first sale doctrine? Regardless of what my motive is. The fact is that If I bought it, I own it and have the right to do as a please with the item.

Worst case scenario I can change it to a "review" in which then I would be protected by "freedom of speech" specially if is a positive review where no defamation is present. I think I would be clear as a whistle.

 

[quincy]

Wouldn't I be protected by the first sale doctrine? Regardless of what my motive is. The fact is that If I bought it, I own it and have the right to do as a please with the item.

Worst case scenario I can change it to a "review" in which then I would be protected by "freedom of speech" specially if is a positive review where no defamation is present. I think I would be clear as a whistle.

Even if you are selling trademarked goods that you have purchased, and you are reselling them on a site (which is legal to do under the first sale doctrine), using the trademarked name or logo to drive traffic to your site can be trademark infringement or an unfair business practice.

You can use another's trademark in a descriptive sense - to describe the goods being sold (if the goods are legal to sell).

Using the trademark in a descriptive sense is what you would be doing with the resale of goods and what you would be doing with a review (positive or negative). But you can still not advertise the goods, or publish a review, on a site that uses the trademark in a way (through domain name or site name or logo use) that creates confusion among consumers as to the site's origin and the trademark holder's role in it.

And, as a note on logos, some are also protected under copyright laws and to reproduce them on your site without permission would be copyright infringement.

If you are not an authorized seller of the trademarked goods (and this is assuming the goods are real and not counterfeit), you need permission from the trademark holder to use their name to market your goods. Otherwise you can be seen as trading off the trademark's good will and, potentially, diluting the value of the mark.

You are not allowed to use another's trademark in a way that is likely to confuse consumers, in other words. If a consumer were to go to your site believing you and your site are endorsed by, sponsored by, affiliated with or in any other way connected with the trademark holder when you and your site are not, that can be seen as infringement on the trademark holder's rights.

If you do not cease and desist as requested in the notice you received, and you are sued for trademark infringement or any one of an assortment of unfair business practices, you can be viewed by the court as a deliberate infringer - and you can be held liable for treble the damages that might otherwise be awarded. If the trademark is a registered mark, you can already be judged a deliberate infringer - you are deemed to know that a registered mark is rights-protected.

In addition, there could be an injunction issued by the court against you while a lawsuit works its way through the court system (and this can take years, depending on the facts). The trademark holder could be awarded all attorney costs in addition to other damages.

With all of that said (and there is more to consider than what I have touched on above), without a personal review of your site and how you are using the trademarks, it is impossible to tell if the trademark holder has a legitimate cause of action against you or if you could, in the event of the suit, have a legitimate defense (e.g., fair use).

I suggest you have the cease and desist notice you received, and the reasons for your receipt of it, personally reviewed by an attorney in your area. We cannot do personal reviews on this site.

 

[single317dad]

Wouldn't I be protected by the first sale doctrine? Regardless of what my motive is. The fact is that If I bought it, I own it and have the right to do as a please with the item.

To be clear, is this an item produced by the complaining party that you have purchased from them and are now trying to sell? Or is there a chance that the item was produced by a third party without permission?

As an example, I used to sell external USB hard drives in fancy colored cases with the Sony VAIO logo on them. Little did I know that Sony never made such a case, until they were kind enough to tell me in a cease and desist notice. Some scammer in China had come up with the idea.

I used to also sell a lot of those manufacturer decals you get when you buy auto parts, like Jeg's, Summit, Moroso, Weiand, Holly, Edelbrock, etc. Had a couple of threats of lawsuit over those, but I ignored them and nothing came of it. Those were decals bought through legit channels that I was reselling. They don't like it when you resell those, but I didn't really care.

Another possibility is that you, the consumer, may be bound by an agreement with the manufacturer similar to that you enter when purchasing Microsoft software. That little sticker that comes with it? You can't sell that (nor any other part of the package you just paid for).

 

[quincy]

To be clear, is this an item produced by the complaining party that you have purchased from them and are now trying to sell? Or is there a chance that the item was produced by a third party without permission?

As an example, I used to sell external USB hard drives in fancy colored cases with the Sony VAIO logo on them. Little did I know that Sony never made such a case, until they were kind enough to tell me in a cease and desist notice. Some scammer in China had come up with the idea.

I used to also sell a lot of those manufacturer decals you get when you buy auto parts, like Jeg's, Summit, Moroso, Weiand, Holly, Edelbrock, etc. Had a couple of threats of lawsuit over those, but I ignored them and nothing came of it. Those were decals bought through legit channels that I was reselling. They don't like it when you resell those, but I didn't really care.

Another possibility is that you, the consumer, may be bound by an agreement with the manufacturer similar to that you enter when purchasing Microsoft software. That little sticker that comes with it? You can't sell that (nor any other part of the package you just paid for).

There will always be more threats of lawsuits than actual lawsuits filed, but it can be risky to ignore these threats.

All trademark holders are responsible for defending their rights in their own marks, or they risk losing these rights (think "escalator," which was once trademark-protected).

That is why, when trademarks are used without the trademark holder's permission, whether the use is a legal one or not (e.g., comparative advertisings, descriptive uses, journalistic purposes, parodies), a cease and desist letter will often be sent. What the trademark holder generally wants more than a lawsuit (which can be as expensive to pursue as it is to defend against, and these suits often take years to resolve) is for the alleged infringer to stop using the mark.

Whether any action goes beyond a cease and desist notice will depend on the type and extent of the infringement, the real (or perceived) harm to the trademark holder, the blatant disregard of the alleged infringer to the rights involved, and/or the trademark holder's litigiousness. You do not, for example, want to ignore a cease and desist letter from the NFL or Disney or you can get in court a quick and costly education in trademark law.

Using another's trademark for "SEO purposes" is a red flag that indicates Rbl is trading off the rights of the trademark holder to drive traffic to his site to increase his (illegal or legal) sales.

That said, I don't think that Rbl should respond to the notice until he has had a chance to review the notice and the facts with an attorney in his area. I do NOT recommend he ignore the notice, however.

 

[single317dad]

That said, I don't think that Rbl should respond to the notice until he has had a chance to review the notice and the facts with an attorney in his area. I do NOT recommend he ignore the notice, however.

Just to clarify, I also do not recommend he ignore the notice.

 

[quincy]

Just to clarify, I also do not recommend he ignore the notice.

Thanks for the clarification.

I was thinking you probably weren't recommending that. But, just in case, I wanted to make sure Rbl did not think that ignoring a cease and desist notice was a good idea, because it generally isn't.