Quincy;
Does not the rights holder have the right to seek op relinquish any counterfeit merchandise in their possession to the rights holder and in fact have a right to request, and if not complied with sue for, damages due to the irreversible violation of their trademark?
The trademark holder can demand all sorts of things but the trademark holder will need to seek a court order to have all counterfeit items held by the counterfeiter seized and destroyed. The trademark holder can also sue to recover all profits made by the counterfeiter, or treble the damages suffered by the trademark holder, as a result of the infringement. Plus attorney fees.
Counterfeits cause, by their very nature, consumer confusion. The whole purpose of marketing counterfeits is to fool consumers into thinking the counterfeit product is an original. Because consumer confusion is almost always a given when dealing with counterfeits, a successful trademark infringement suit can be pursued against a counterfeiter with far less difficulty than might be the case with other trademark infringement suits.
While I understand your advice to not initiate an attempt to settle the matter, if I understand your teachings over the years, there is not much the op can do to avoid a financial settlement should the rights holder wish to push the issue.
It can be hard for a true counterfeiter to avoid having to pay a trademark holder, either through a settlement or through a court action. It depends on the trademark holder, however, how much time, effort and money they are willing to spend on an individual who has only sold a few items (compared to a counterfeiter who is marketing hundreds of counterfeit items on a wide scale basis). The trademark holder might be more interested in having the few items pulled from the market although they might want to work with the small-time seller to find out the identity of the main supplier of the counterfeit goods.
Sometimes an online seller will sell a counterfeit item that they perhaps purchased from a garage sale or from the back of a truck. It is still a counterfeit item they are selling, and the item can be pulled from its place online, but the trademark holder will often do little past the cease and desist letter - unless they see the seller as a regular seller of counterfeit goods.
From what Frtransinc has said, he purchased items "legally," which could mean he was unaware they were counterfeits. This does not excuse the infringement, but it can be a mitigating factor.
It also appears it is possible to criminally charge the violator with a first offender subject to up to a $2,000,000 fine and up to 10 years in prison. I wouldn't think the op would be subject to anything so oppressive for a first time offense concerning a minimal amount of product but as you mentioned, if this is only the tip of the iceburg who knows how large of an operation op is involved with.
The Department of Justice will be involved with counterfeiters who operate on a large-scale basis. These counterfeiters are the ones who are likely to wind up with hefty fines and doing some time in prison.
I don't, by the way, advise that Frtransinc do
nothing. He should have the notice he received personally reviewed by a trademark attorney if/when money is demanded. He should not blindly pay any demand that is made and I don't believe he needs to make any effort to contact the trademark holder. Frtransinc needs to be sure first that the cease and desist letter, and any future demands that are made, are from a legitimate source who holds legitimate rights. Because trademark holders can lose rights if they are not aggressive in stopping infringers from infringing on their marks, some trademark holders will try to assert rights even when there has been no infringement and they actually have no rights to assert.
