Enforcing Trademarks Against Online Sellers and Platforms: A Practical Guide

Summary. This guide takes brand owners, accused online sellers, and platforms through online trademark enforcement in the order it actually happens. For brand owners, it covers the foundation (registrations, marketplace brand programs, Customs recordation, and genuine exemplars), monitoring and triage, test purchases with a chain of custody, sorting counterfeit from gray market from lawful resale, platform notices and escalation, identifying sellers through INFORM disclosures and subpoenas, demand letters, and the choice among a single-defendant suit, a Schedule A case, a claim against the platform, and border and domain remedies. For accused sellers, it explains how to read a takedown, appeal with documents, answer a demand letter, and defend a Schedule A case on authenticity, personal jurisdiction, joinder, and the scope of an asset freeze. For platforms, it describes the notice-handling record that Tiffany v. eBay rewards and the seller verification the INFORM Consumers Act requires. It explains the decisions that shape each step, including Tiffany, Omega v. 375 Canal, Y.Y.G.M. v. Redbubble, NBA Properties v. HANWJH, and Gucci America v. Weixing Li, with timelines, costs, and the evidence each stage demands. A worked example follows a water filter brand through three marketplaces and a Schedule A case, and the guide closes with common mistakes, an FAQ, and practical takeaways.

At 9:40 on a Monday morning, the customer-service lead at a water filter company forwards a photograph: a cracked filter housing, a label printed in the wrong shade of blue, and a one-star review complaining that the water "tastes like a swimming pool." The listing sits on a major marketplace, the seller's storefront is three weeks old, and the price is half of retail. A few states away, a small reseller who buys closeouts from a regional distributor opens her seller dashboard to find six listings removed for "counterfeit" and her account under review. This guide is for both of them, and for the platform standing between them.

Online enforcement rewards the side that works in the right order. Brand owners who start by suing the marketplace lose a year; brand owners who start by reporting everything as counterfeit lose their credibility with the platforms and sometimes a lawsuit. Sellers who ignore a takedown or a Schedule A summons lose by default. What follows is the sequence that works, step by step, with the law that governs each step. The doctrine behind it (keyword advertising, the Inwood test, Tiffany v. eBay, and willful blindness) is explained at length in the companion article, Trademark Liability Online: Keyword Advertising, Marketplaces, and Contributory Infringement After Tiffany v. eBay; this guide is about what to do.

The short answer

If you own the brand, online enforcement is a ladder, and most matters end on its lower rungs. Build the foundation first: a federal registration that covers the goods actually being sold, enrollment in each marketplace's brand program, Customs recordation, and a library of genuine exemplars. Then monitor, verify suspect listings with test purchases, sort what you find into counterfeit, gray market, and lawful resale, and use the platforms' notice systems for the first two. Escalate to account-level action, demand letters to identifiable sellers, and, for anonymous counterfeiters at scale, a "Schedule A" lawsuit (one complaint against many storefronts listed on a sealed schedule) with an asset freeze and statutory damages under 15 U.S.C. § 1117(c). Sue the platform only when it has ignored specific notices, because under Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) that is the only theory that reliably works.

If you are the accused seller, the clock started when the listing came down. Preserve your records, decide honestly whether your goods are genuine and materially identical to what the brand sells in the United States, appeal to the platform with invoices and photographs, and answer any demand letter with documents rather than indignation. If you are named in a Schedule A case, appear quickly. The defenses that matter (authenticity, personal jurisdiction, joinder, and the scope of the asset freeze) have to be raised early, and the plaintiff's leverage in those cases comes almost entirely from defendants who never show up.

If you run the platform, your protection against Lanham Act claims is the record you keep. There is no trademark safe harbor, and 47 U.S.C. § 230(e)(2) withholds Section 230 immunity from intellectual property claims. A working notice channel, prompt removal of specifically identified listings, real action against repeat offenders, attention to red flags about particular sellers, and compliance with the seller-verification duties of 15 U.S.C. § 45f are what keep a marketplace on the right side of Tiffany.

The legal framework in one place

The statutes below do almost all of the work in online enforcement. Keep the table handy; most of the steps in this guide cite back to it.

Secondary liability (the liability of a platform, landlord, or supplier for someone else's infringement) appears nowhere in the statute. It comes from Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982), which holds a defendant liable if it intentionally induces infringement or continues to supply its product or service to one it knows or has reason to know is infringing. The Restatement (Third) of Unfair Competition § 27 (1995) states the same rule for suppliers, and J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition ch. 25 (5th ed.), collects the counterfeiting and contributory-infringement cases (§§ 25:17 to 25:20.50 on contributory liability). For remedies, McCarthy ch. 30 is the standard reference, including § 30:95 on statutory damages for counterfeits.

The decisions that shape enforcement practice

You do not need every case in this field to run an enforcement program, but you do need these, because each one changes what you should do at a particular step.

Notice must be specific. In Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010), the Second Circuit held that a marketplace needs "more than a general knowledge or reason to know that its service is being used to sell counterfeit goods"; it needs contemporary knowledge of which particular listings are infringing or will infringe. eBay won because it removed every listing Tiffany reported and suspended repeat offenders. The practical rule: notices identify listings and sellers, and general letters about "rampant counterfeiting" accomplish nothing.

Willful blindness counts, but only about something specific. Omega SA v. 375 Canal, LLC, 984 F.3d 244 (2d Cir. 2021) affirmed a $1.1 million statutory damages verdict against a Canal Street landlord that had a history of counterfeit sales on its premises and chose not to investigate; the brand did not have to name the vendor, because a defendant can be willfully blind to infringers' identities. Y.Y.G.M. SA v. Redbubble, Inc., 75 F.4th 995 (9th Cir. 2023) adds the Ninth Circuit's limit: willful blindness requires a subjective belief that specific infringement is likely and deliberate steps to avoid confirming it, applying the test of Luvdarts, LLC v. AT&T Mobility, LLC, 710 F.3d 1068 (9th Cir. 2013), which tracks the Supreme Court's general formulation of willful blindness in Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011). General awareness of fakes on a platform, even fakes of the plaintiff's own marks, creates no duty to go looking.

Notice plus continued service creates liability. A web host that ignored eighteen notices paid (Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936 (9th Cir. 2011)); so did a flea market operator after letters and police raids (Coach, Inc. v. Goodfellow, 717 F.3d 498 (6th Cir. 2013)). The rule is not confined to platforms. In Lontex Corp. v. Nike, Inc., 107 F.4th 139 (3d Cir. 2024), Nike kept supplying "Cool Compression" products to third-party retailers, whose online listings carried the phrase, after receiving the mark owner's cease-and-desist letter, and the Third Circuit held the evidence sufficient for a jury to find Nike contributorily liable. A demand letter can create the knowledge that Inwood's second prong requires.

Platforms that make and brand the goods can be direct infringers. Ohio State University v. Redbubble, Inc., 989 F.3d 435 (6th Cir. 2021) reversed summary judgment for a print-on-demand marketplace and remanded for a fact-intensive look at its role in creating, branding, and shipping the products. Fulfillment and private-label models invite the same question.

One sale can support jurisdiction, if the seller structured its business to make it. NBA Properties, Inc. v. HANWJH, 46 F.4th 614 (7th Cir. 2022) upheld jurisdiction in Illinois over a foreign Amazon seller based on a single purchase by the plaintiff's investigator, because the seller had set up its store to accept and ship orders to Illinois. Contrast Advanced Tactical Ordnance Systems, LLC v. Real Action Paintball, Inc., 751 F.3d 796 (7th Cir. 2014), where a handful of forum sales not shown to be connected to the challenged conduct, plus an interactive website and an email list, did not suffice; be2 LLC v. Ivanov, 642 F.3d 555 (7th Cir. 2011), where twenty Illinois residents signing up for a website was not enough; and Toys "R" Us, Inc. v. Step Two, S.A., 318 F.3d 446 (3d Cir. 2003), where two purchases engineered by the plaintiff were not purposeful availment, although the court allowed jurisdictional discovery. The Ninth Circuit takes a similar view to the Seventh: a seller that, in its regular course of business, sells physical products through an interactive storefront and ships them into the forum has expressly aimed its conduct there. Herbal Brands, Inc. v. Photoplaza, Inc., 72 F.4th 1085 (9th Cir. 2023).

Asset freezes need an equitable hook and a court with jurisdiction over the holder. Grupo Mexicano de Desarrollo, S.A. v. Alliance Bond Fund, Inc., 527 U.S. 308 (1999) bars prejudgment freezes in actions for money damages alone, but because the Lanham Act authorizes an equitable accounting of profits, courts permit freezes in counterfeiting cases. Reebok International Ltd. v. Marnatech Enterprises, Inc., 970 F.2d 552 (9th Cir. 1992); Levi Strauss & Co. v. Sunrise International Trading Inc., 51 F.3d 982 (11th Cir. 1995). In Gucci America, Inc. v. Weixing Li, 768 F.3d 122 (2d Cir. 2014), the Second Circuit agreed that a court with personal jurisdiction over the defendants could restrain their assets, but held that the nonparty foreign bank holding the funds was not subject to general jurisdiction in New York, remanded for a determination of whether specific jurisdiction supported the orders against it, and reversed a contempt finding against the bank.

Email service works when the address is unknown or the treaty allows it. Rio Properties, Inc. v. Rio International Interlink, 284 F.3d 1007 (9th Cir. 2002) approved court-ordered email service under Rule 4(f)(3) on an elusive foreign online business. The Hague Service Convention applies whenever documents must be transmitted abroad for service (Volkswagenwerk Aktiengesellschaft v. Schlunk, 486 U.S. 694 (1988)), permits service by mail only where the receiving state has not objected and other applicable law authorizes it (Water Splash, Inc. v. Menon, 581 U.S. 271 (2017)), and does not apply where the defendant's address is not known. Those three points decide whether email service on a storefront in a treaty country will hold up.

Statutory damages have a method. Louis Vuitton Malletier S.A. v. LY USA, Inc., 676 F.3d 83 (2d Cir. 2012) arose from a $3 million statutory award against counterfeiters, which the Second Circuit affirmed in a companion summary order; the published opinion holds that attorney's fees remain available in exceptional cases even when the plaintiff elects statutory damages. Courts in the Second Circuit commonly set § 1117(c) awards by borrowing the copyright factors collected in Bryant v. Media Right Productions, Inc., 603 F.3d 135 (2d Cir. 2010): the infringer's state of mind, profits earned and expenses saved, the plaintiff's lost revenue, deterrence, the defendant's cooperation in supplying sales records, and the parties' conduct.

Defendants who appear can win. In the hoverboard litigation that began as a Schedule A case in the Northern District of Illinois, the Federal Circuit set aside the preliminary injunction against several sellers because it rested on the wrong legal standard and was overbroad, ABC Corp. I v. Partnership & Unincorporated Associations Identified on Schedule "A", 52 F.4th 934 (Fed. Cir. 2022), and the sellers later won summary judgment of noninfringement, affirmed in ABC Corp. I v. Partnership & Unincorporated Associations Identified on Schedule "A", No. 2024-1471 (Fed. Cir. Aug. 14, 2025) (nonprecedential). That was a design patent case, but the lesson carries over: the model depends on defaults, and a defendant with a real defense changes the economics.

Part one: the brand owner's program, step by step

The twelve steps below run roughly in order, although a mature program runs several of them at once. Steps 1 through 6 are cheap and fast and resolve most problems. Steps 7 through 12 cost real money and are for the sellers and storefronts that survive the first six.

Step 1: Build the foundation before you need it

Every tool later in this guide depends on paperwork that is easy to create in advance and painful to create in an emergency.

1. Register the marks that counterfeiters actually copy, for the goods they actually sell. The counterfeiting remedies apply only to a mark registered on the Principal Register for the goods in question, and almost every marketplace brand program requires a registration or at least a pending application. Check the identification of goods: a registration for "water filtering units" may not cover replacement cartridges or the branded bottle the fakes are sold in. The USPTO's base application fee has been $350 per class since January 2025, with surcharges for incomplete or free-form identifications. See Filing a USPTO Trademark Application Checklist: A Practical Checklist and Benefits of Federal Trademark Registration: A Practical Guide.
2. Use the ® symbol on packaging and listings. Under 15 U.S.C. § 1111, a registrant that fails to give notice of registration cannot recover profits or damages unless the defendant had actual notice. Counterfeiters rarely have that excuse, but gray market resellers and lookalike sellers sometimes do.
3. Enroll in the brand programs. Amazon Brand Registry, Walmart's Brand Portal, eBay's Verified Rights Owner (VeRO) program, Etsy's intellectual property reporting, TikTok Shop's IP Protection Center, and Alibaba's IP Protection Platform each require proof of rights and an account owner. Assign one person to hold the credentials and the agent authorizations, and keep a record of who is authorized to file on the brand's behalf.
4. Record the registrations with Customs. Recordation under 19 C.F.R. Part 133 is filed electronically, carries a per-class fee, and lasts as long as the registration. Include images of genuine product, a list of authorized manufacturers and importers, and a short identification guide officers can use at the port.
5. Build a genuine-exemplar library and an authentication guide. Keep retained samples of each product and packaging version, the batch-code and serial-number logic, label and print specifications, and a confidential list of the features that distinguish genuine goods. Someone at the company must be able to sign a declaration explaining, item by item, why a test purchase is not genuine.
6. Document quality control. Gray market and expired-goods claims depend on proof that the brand's quality-control procedures are legitimate, substantial, and nonpretextual, and that it actually follows them. Warner-Lambert Co. v. Northside Development Corp., 86 F.3d 3 (2d Cir. 1996). If batch codes are part of that system, document how they are used for recalls and tracing, because removing them can make otherwise genuine goods infringing. Zino Davidoff SA v. CVS Corp., 571 F.3d 238 (2d Cir. 2009).
7. Publish an authorized-seller policy and tighten distribution contracts. A public list of authorized sellers, plus distributor agreements that restrict marketplace sales, prohibit code removal, and require cooperation in enforcement, turns many future "who sold this?" questions into contract claims. See Distribution, Reseller, and Channel Partner Agreements: A Practical Guide.

Step 2: Monitor, then triage what you find

Monitoring means systematically searching the places fakes appear: marketplace search results for the brand name, common misspellings, and product photographs (many platforms and vendors offer image matching); social commerce, including affiliate videos on TikTok Shop and shoppable posts on Instagram; standalone storefronts on lookalike domains; and the brand's own customer-service, warranty, and review data. Warranty claims for products with serial numbers that match no production record are an early warning system, as the radar-detector maker in Beltronics USA, Inc. v. Midwest Inventory Distribution, LLC, 562 F.3d 1067 (10th Cir. 2009) learned when buyers of relabeled units called for warranty service. Monitoring vendors typically charge from about $1,000 to more than $10,000 a month depending on the number of marketplaces, products, and takedowns included.

Monitoring produces far more hits than any brand can investigate, so triage before you buy anything:

The top of that table is where test purchases go first. The bottom rows often get a platform notice without a purchase if the listing itself shows infringement (for example, the storefront calls itself "Official Brand Store"), or nothing at all.

Step 3: Make test purchases and preserve the evidence

A listing photograph proves nothing about the product in the box, so counterfeiting claims rest on test purchases. A good test purchase does four things: it proves the product is not genuine, it shows the seller ships to the forum (the jurisdictional fact in NBA Properties), it identifies the payment recipient and shipper, and it creates an exhibit that a witness can authenticate.

1. Choose the buyer. Use an investigator or paralegal, not the lawyer who will argue the case. Courts have long accepted investigators posing as ordinary customers to detect infringement: "hiring investigators to pose as consumers is an accepted investigative technique, not a misrepresentation." Gidatex, S.r.L. v. Campaniello Imports, Ltd., 82 F. Supp. 2d 119 (S.D.N.Y. 1999); see also Apple Corps Ltd. v. International Collectors Society, 15 F. Supp. 2d 456 (D.N.J. 1998). Check your state's version of the rules on communications with represented persons before anyone contacts a seller known to have counsel.
2. Capture the listing before buying. Record the full page with URL and timestamp, the seller name and ID, the item or ASIN number, price, photographs, shipping options (showing the forum state as a destination), and any INFORM seller disclosure. A screen recording of the navigation from search to checkout is better than a screenshot. Hash the files and store them unaltered.
3. Buy with an eye on the money trail. Ship to an address in the district where you would sue, pay with a card or account that shows the merchant descriptor, and keep the order confirmation, shipping notice, and tracking history.
4. Receive and document. Photograph the package unopened (labels, tracking, return address), open it on video, compare the contents side by side with a genuine exemplar, and seal the item in a labeled evidence bag. Every person who handles it signs a chain-of-custody log with date, time, and purpose.
5. Examine and declare. The brand's authentication witness examines the item and signs a declaration under 28 U.S.C. § 1746 that identifies each nonconforming feature (fill weight, print, materials, batch code, packaging construction). Generic statements that the item "is counterfeit" invite challenge; specific comparisons win.

Authentication is not demanding, but it must be done. Fed. R. Evid. 901 requires only evidence sufficient to support a finding that the item is what the proponent claims, usually the testimony of the person who captured the page or made the purchase. Lorraine v. Markel American Insurance Co., 241 F.R.D. 534 (D. Md. 2007) remains the most complete judicial walk-through of authenticating electronic evidence, and United States v. Vayner, 769 F.3d 125 (2d Cir. 2014) is the warning: a printout of a web page does not prove who created it, so tie storefronts to defendants through the platform's records, payment data, and shared identifiers rather than through the page alone. Large volumes of listings can be presented through a summary chart under Fed. R. Evid. 1006, with the underlying captures available for inspection. Test purchases typically cost the price of the product plus $40 to $150 in investigator time and shipping per purchase; forensic examination of complex goods can add several hundred dollars per item. For capture tools and declarations, see Authenticating Website Evidence: A Practical Checklist and Capturing the Web: A Practitioner's Guide to Authenticating Website Screenshots as Evidence in Federal Court.

Step 4: Sort the listings into the right piles

Before a single notice goes out, put every investigated listing into one of six piles. The legal theory, the tool, and the risk of getting it wrong all differ by pile.

Keyword advertising that uses your mark belongs on a separate track: complaints to the ad platform about ad text, and letters that target ad copy rather than bidding. The companion article explains why. For the fair use defenses in the last row, see Asserting or Defeating a Trademark Fair Use Defense: A Practical Guide and Trademark Fair Use Analysis Checklist: A Practical Checklist.

Step 5: File platform notices that hold up

A platform notice is a private complaint under the platform's terms, not a legal filing, but it should be drafted as though a judge will read it, because one may. A notice that holds up contains:

1. The rights owner's name and the sender's authority (an employee, an outside counsel, or an authorized agent).
2. The registration number, the class, and the goods covered.
3. The specific listing (URL, item number, or ASIN) and the seller's storefront name and ID.
4. The correct category: counterfeit, trademark infringement, or copyright (for copied product photographs).
5. The factual basis: the test-purchase reference and the nonconforming features, or the specific misuse visible on the listing.
6. A statement of good-faith belief and accuracy, signed by a person with knowledge.

Most platforms share the notice, often including the complainant's contact details, with the seller, so write nothing you would not want the seller (and later a judge) to read. Where the seller has copied the brand's own product photographs, a copyright notice under 17 U.S.C. § 512(c)(3) is often the fastest route, but it must meet the statutory elements and must be accurate. A knowing material misrepresentation in a DMCA notice creates liability under § 512(f), and the sender must consider fair use before sending, Lenz v. Universal Music Corp., 815 F.3d 1145 (9th Cir. 2016), although the good-faith standard is subjective, Rossi v. Motion Picture Ass'n of America Inc., 391 F.3d 1000 (9th Cir. 2004). Trademark notices carry no statutory counter-notice procedure; most platforms let the seller dispute a removal, and a disputed removal often ends with reinstatement and a message telling the parties to resolve it elsewhere.

Track three numbers for every platform: notices filed, notices accepted, and time to removal. Acceptance rates matter because the platforms track them too. Amazon, for example, grants its self-service counterfeit removal tool in Project Zero only to brands with a history of accurate reports, and a run of rejected or retracted notices can cost a brand its expedited privileges.

Step 6: Escalate on the platform, and build the record

When the same seller relists, when linked storefronts multiply, or when a platform stops responding, move from listing-level notices to account-level requests and a written record.

• Ask for account action, with the pattern. Show the platform why the storefronts are linked: identical photographs and listing text, shared return addresses, the same payment recipient on test purchases, sequential creation dates. Ask for suspension of the accounts, not only removal of listings.
• Write to the platform's legal or brand-protection team. A short letter that lists the storefronts, the prior notices with dates, the test-purchase results, and the platform's responses does two jobs. It gets attention now, and, if ignored, it supplies the specific knowledge that turned the defendants in Akanoc and Omega into payers. Ask the platform to preserve listing, transaction, and account records for the identified sellers.
• Ask for seller information. Some platforms share seller contact details with verified rights owners; others require legal process. INFORM disclosures on the listing may already identify the larger sellers.
• Keep the log. For each notice: date, platform, listing and seller ID, category, test-purchase reference, response, and time to action. The same log is either the platform's Tiffany defense or the brand's willful blindness case, and it is the foundation of the willfulness showing against the seller.
• Look for partnership. Several marketplaces run programs for joint investigations and referrals, and Amazon's Counterfeit Crimes Unit, formed in 2020, has brought lawsuits alongside brands. A brand with a clean reporting record is the kind of partner those programs choose.

The platform documents in this cluster supply the forms: Online Trademark Enforcement Toolkit: Platform Notices, Test Purchase Records, and Contributory Liability Demands has notice templates, test-purchase logs, and a specific-notice letter, and Online Marketplace Trademark Enforcement Checklist: A Practical Checklist turns Steps 1 through 6 into a checklist.

Step 7: Identify the seller and follow the money

Anonymous sellers are less anonymous than they look. Start with what is public, then use legal process for the rest.

• INFORM disclosures. Since June 27, 2023, 15 U.S.C. § 45f has required online marketplaces to collect and verify bank account, tax identification, and contact information from every "high-volume third party seller" (200 or more discrete sales of new or unused consumer products totaling $5,000 or more in any continuous twelve-month period during the previous two years), and to disclose to consumers, on the product listing page or in the order confirmation, the name, physical address, and contact information of those with $20,000 or more in annual gross revenue on the platform, subject to limited exceptions. A seller that gave false information to the platform has handed you a willfulness argument.
• The test-purchase trail. The merchant descriptor on the card statement, the return address and shipper on the label, and the emails in the order confirmation often identify the real operator, and they link storefronts that look unrelated.
• Standalone sites. Domain registration data is usually privacy-protected, but registrars and hosts answer subpoenas, and a counterfeiter who gave a registrar materially false contact information faces a rebuttable presumption of willfulness under 15 U.S.C. § 1117(e).
• Legal process requires a case. The Copyright Act gives copyright owners a pre-suit subpoena to identify alleged infringers under § 512(h); trademark law has no counterpart. To compel a marketplace or payment processor to identify a seller, you file suit (against the storefront names or against "Doe" defendants) and seek leave for discovery before the Rule 26(f) conference under Fed. R. Civ. P. 26(d)(1). Courts grant it for good cause, typically on a prima facie claim, a narrow request, and no other way to identify the defendant: Sony Music Entertainment Inc. v. Does 1-40, 326 F. Supp. 2d 556 (S.D.N.Y. 2004); Arista Records, LLC v. Doe 3, 604 F.3d 110 (2d Cir. 2010); Columbia Insurance Co. v. Seescandy.com, 185 F.R.D. 573 (N.D. Cal. 1999). Subpoenas then issue under Fed. R. Civ. P. 45, and platforms usually notify the account holder and give a short window to object.
• Foreign proceedings. If you are suing the seller abroad, 28 U.S.C. § 1782 lets an interested person in a foreign proceeding ask the federal court where a platform resides or is found to order discovery for use there.

The anonymous-defendant documents cover the motions and subpoenas in detail: Identifying an Anonymous Defendant Online: A Practical Guide, John Doe Litigation Toolkit: Early Discovery Motions, Platform Subpoenas, and Motions to Quash, and Rule 45 Subpoenas to Nonparties: Service, Objections, and Motions to Quash.

Step 8: Send demand letters matched to the pile

A demand letter is the cheapest litigation you will ever conduct, and for identifiable domestic sellers it resolves most matters. Match the demand to the pile from Step 4.

Three cautions. First, a letter that threatens suit can give the recipient grounds to file a declaratory judgment action in its own home court, so threaten only what you will actually do. Second, settlement communications are inadmissible to prove liability or amount under Fed. R. Evid. 408, but the demand letter itself is usually admissible to prove notice, which is the point: it establishes knowledge for willfulness and, for suppliers who keep shipping, for contributory liability (Lontex). Third, accuracy matters. A letter calling genuine goods counterfeit is an exhibit in the recipient's counterclaim. Give a deadline of ten to fourteen days, and calendar the follow-up. For drafting, see Drafting a Trademark Cease-and-Desist Letter and Drafting a Trademark Cease-and-Desist Letter Checklist: A Practical Checklist.

Step 9: Choose the litigation vehicle

When notices and letters fail, the right vehicle depends on who the seller is, where it is, and what it has.

Federal courts have jurisdiction over Lanham Act claims under 28 U.S.C. § 1338, and venue follows 28 U.S.C. § 1391, which allows suit against a defendant not resident in the United States in any district. Personal jurisdiction is the real limit, and it is why test purchases ship to the forum. The domain procedures are compared in Choosing the Right Domain Name Dispute Procedure: A Practical Guide and Domain Name Dispute Forum Selection Checklist: A Practical Checklist.

Step 10: Run a Schedule A case from complaint to collection

The Schedule A model grew up in the Northern District of Illinois and now appears in several other districts, including the Southern District of Florida and the Southern District of New York. It works because most defendants never appear. Run it carefully, because judges have grown skeptical of every shortcut in it.

1. Prepare the evidence for each defendant (weeks 1 to 4). For every storefront: a test purchase shipped into the district, the listing captures, the authentication declaration, and the facts that tie the storefronts together (shared photographs and listing text, identical misspellings, common payment accounts, coordinated creation dates). Joinder under Fed. R. Civ. P. 20 requires claims arising out of the same transaction, occurrence, or series of them; selling knockoffs of the same product is not enough by itself. See 7 Charles Alan Wright, Arthur R. Miller & Mary Kay Kane, Federal Practice and Procedure § 1653 (3d ed.). A complaint signed under Fed. R. Civ. P. 11 must have evidentiary support for each defendant's inclusion.
2. File (day 1). The complaint lists the storefronts on a schedule filed temporarily under seal, with a motion explaining why public filing would let the sellers move their money. The federal filing fee is $405. File the TRO motion at the same time.
3. Obtain the TRO (days 2 to 10). Under Fed. R. Civ. P. 65(b), an ex parte TRO requires specific facts showing immediate and irreparable injury before the defendants can be heard, and counsel's certification of why notice should not be required. The proposed order typically enjoins sales, directs marketplaces and payment processors to restrain the storefronts' accounts, authorizes expedited discovery of seller identities and balances, and authorizes service by email. Since the Trademark Modernization Act of 2020, a plaintiff who shows a likelihood of success is entitled to a rebuttable presumption of irreparable harm under 15 U.S.C. § 1116(a), which resolved the post-eBay uncertainty reflected in Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc., 736 F.3d 1239 (9th Cir. 2013). The other factors still come from Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008). The court sets security under Rule 65(c) to cover damages to any party wrongfully restrained (11A Wright & Miller § 2954). The TRO expires after no more than fourteen days unless extended for good cause.
4. Freeze the money. Marketplaces and payment processors served with the order generally comply, because Rule 65(d)(2) binds persons in active concert or participation with the parties who receive actual notice. The freeze rests on the equitable accounting of profits (Reebok; Levi Strauss; Gucci v. Weixing Li), so tie its scope to the profits you can plausibly prove, not to everything in the account.
5. Serve (week 2). Serve by email or electronic publication as the order allows under Fed. R. Civ. P. 4(f)(3), after confirming that the Hague Service Convention does not stand in the way for any defendant whose address is known. See Serving a Foreign Defendant Under the Hague Convention: A Practical Checklist and Serving a China-Based Defendant Under the Hague Service Convention: A Practical Guide.
6. Convert to a preliminary injunction (weeks 2 to 4). Usually unopposed. Defendants who appear at this stage tend to settle quickly for part of the frozen balance.
7. Take defaults (months 2 to 4). Default is a two-step process under Fed. R. Civ. P. 55: entry of default, then a default judgment, at which the court still decides whether the well-pleaded allegations establish liability and fixes relief on evidence. City of New York v. Mickalis Pawn Shop, LLC, 645 F.3d 114 (2d Cir. 2011). Support statutory damages with the evidence the Bryant factors call for: the defendant's sales data from the platform, its willfulness, and the deterrence rationale. Requests for the statutory maximum against every storefront draw scrutiny; awards tied to the evidence survive.
8. Collect (months 3 to 6). The judgment directs the platforms and processors to transfer the restrained funds; enforcement beyond that runs through Fed. R. Civ. P. 69. Release funds promptly for defendants dismissed or settled, and unseal the record once the freeze is in place.

For the doctrine and the critics, see Counterfeiting, Seizure Orders, and Schedule A Litigation: Fighting Fakes in Federal Court; for the emergency-relief papers, Preliminary Injunction and TRO Application Checklist: A Practical Checklist.

Step 11: When, and how, to pursue the platform itself

Suing a marketplace, host, or payment processor is a last resort, and it should be a deliberate one. The claim is viable only when the record shows the elements Tiffany and its successors require:

1. A direct infringement by the seller, proved with test purchases.
2. Specific knowledge: notices identifying particular listings or sellers, with dates and proof of delivery, or evidence that the platform suspected specific infringement and deliberately avoided confirming it (Omega; Y.Y.G.M.).
3. Continued service after that knowledge: the same storefronts kept selling, were reinstated, or were allowed to reopen under new names the platform could easily link.
4. Control of the instrumentality, which the Ninth Circuit makes an express element for service providers (Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980 (9th Cir. 1999)): a host with the "master switch" qualifies (Akanoc); a registrar providing a routine translation service did not; card networks did not in Perfect 10, Inc. v. Visa International Service Ass'n, 494 F.3d 788 (9th Cir. 2007), while processors essential to counterfeit sales survived a motion to dismiss in Gucci America, Inc. v. Frontline Processing Corp., 721 F. Supp. 2d 228 (S.D.N.Y. 2010).

Send the specific-notice letter from Step 6 first, with a deadline and a preservation demand. Plead the notices, the dates, the listings, and the platform's responses; a complaint that rests on general awareness will be dismissed under Tiffany. Do not plead vicarious liability unless the platform and the seller are genuinely partners or jointly control the product, because courts reject it otherwise (Hard Rock Cafe Licensing Corp. v. Concession Services, Inc., 955 F.2d 1143 (7th Cir. 1992); Kelly-Brown v. Winfrey, 717 F.3d 295 (2d Cir. 2013)). In discovery, ask for the notice logs, internal escalations, repeat-offender records, and revenue from the identified sellers. If the claim succeeds, the platform is jointly and severally liable with the sellers, including for statutory damages. Most such disputes end in cooperation agreements rather than judgments, which is often what the brand wanted in the first place.

Step 12: Close the border and the domains

Online counterfeits are physical goods that cross a border and storefronts that sit on domains, and both are chokepoints.

• Customs. With recordation in place, officers who find suspected counterfeits detain them, notify the importer, and may share information and samples with the brand under 19 C.F.R. Part 133; goods bearing counterfeit marks are subject to seizure and forfeiture under 19 U.S.C. § 1526(e), with civil fines under § 1526(f), and 19 U.S.C. § 1595a(c) supplies a further seizure authority. Respond to Customs requests within the deadlines in the notice, and train officers with a product identification guide. The border documents cover the program: Stopping Gray Market and Counterfeit Imports: A Practical Guide, Border Enforcement Toolkit: Recordations, Seizure Responses, and Gray Market Programs, and Customs IP Enforcement Checklist: A Practical Checklist.
• Domains and hosts. A lookalike storefront on its own domain can be reached through a Uniform Rapid Suspension complaint, a UDRP complaint, or an in rem action, and its host can be put on notice; after Akanoc, a host that ignores specific notices takes on the risk. See Beyond the UDRP: Uniform Rapid Suspension, Country-Code Domain Disputes, In Rem ACPA Actions, and Reverse Domain Name Hijacking.
• Payments. Payment processors and card networks run brand-protection channels, and industry programs such as the International AntiCounterfeiting Coalition's RogueBlock route complaints about counterfeit merchants to participating processors. Cutting off payment is often more durable than removing a listing.

Part two: the accused seller, step by step

Sellers who receive takedowns fall into three groups: those selling fakes, those selling genuine goods the brand would rather they did not sell, and those somewhere in between (decoded units, foreign-market versions, the brand's own photographs on a lawful listing). The steps are the same for all three; the outcomes are not.

Step 1: Read what was reported and preserve everything

Find out exactly what the notice alleges: counterfeit, trademark infringement, or copyright infringement, and by whom (the brand itself or an enforcement agent). Do not relist the item under a new listing, open a second storefront, or delete anything. Relisting looks like evasion to the platform and like willfulness to a court, and deleting records invites sanctions under Fed. R. Civ. P. 37(e) if litigation follows. Put a litigation hold on invoices, supplier correspondence, sales data, and listing history the day the notice arrives. See Litigation Holds, Spoliation, and Rule 37(e): Preserving Electronic Evidence Before It Costs You the Case and Litigation Hold and Evidence Preservation Checklist: A Practical Checklist.

Step 2: Decide honestly what you are selling

Answer five questions with documents, not memory:

1. Is it genuine? Can you trace each unit to the brand or an authorized distributor through invoices?
2. Is it the U.S. version? Goods made for another market can differ in formula, labeling, warranty, or service, and material differences defeat the first sale defense. Beltronics USA, Inc. v. Midwest Inventory Distribution, LLC, 562 F.3d 1067 (10th Cir. 2009); Nestle.
3. Is it intact and in date? Removed batch codes, broken seals, and expired stock can make genuine goods infringing. Zino Davidoff.
4. Is the listing accurate? Calling used goods new, implying authorization, or using the brand's logo as your storefront banner creates claims that have nothing to do with authenticity. Using a brand's mark as your own storefront name is a source-identifying use that gets no First Amendment screening after Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023).
5. Whose photographs are these? Product photographs copied from the brand's website support a copyright claim even when the goods are genuine.

If the honest answer to the first question is no, stop selling, preserve your records, and talk to a lawyer about cooperation and exposure; counterfeiting statutory damages are severe, and willfulness multiplies them. If the answers are good, you have a defense worth asserting.

Step 3: Appeal to the platform with documents

Platforms reinstate listings when a seller shows authenticity. Submit invoices from the brand or an authorized distributor (prices can be redacted), photographs of the item showing intact codes and labeling, and a short, factual explanation. Ask the reporting party directly to retract the notice; several platforms let the rights owner withdraw a complaint, which is the fastest path to reinstatement. Do not submit altered or borrowed invoices: platforms check, and a fabricated appeal ends the account and supplies a fraud claim. If the complaint was a copyright notice under the DMCA, a counter-notice under § 512(g) leads a platform that wants to keep its safe harbor to restore the material in ten to fourteen business days unless the complainant files suit, a procedure trademark complaints do not have. See Responding to a DMCA Takedown with a Counter-Notice: A Practical Checklist.

Step 4: Answer the brand owner's letter

Respond in writing, on time, and with evidence. A response that documents the supply chain and offers a practical accommodation (removing the brand's photographs, adding a "not an authorized dealer" statement, dropping a disputed product line) resolves most disputes with brands that are acting in good faith. A response that only argues invites a lawsuit. Check your insurance policies for coverage and notice requirements before you respond to a threat of suit. For the mechanics, see Responding to a Trademark Cease-and-Desist Letter and Responding to a Trademark Cease-and-Desist Letter Checklist: A Practical Checklist.

Step 5: If you are named in a Schedule A case

The first notice is often an email with a link to a sealed complaint and a TRO that has already frozen your marketplace balance. Act within days.

1. Retain counsel who can appear in that court. The case will proceed to default without you, and a default judgment for statutory damages will be collected from the frozen funds.
2. Move to dissolve or modify the TRO. Fed. R. Civ. P. 65(b)(4) lets a restrained party move on two days' notice. Show which portion of the frozen balance comes from sales unrelated to the accused product; a freeze justified by an accounting of profits should not exceed the profits plausibly at issue.
3. Raise personal jurisdiction in your first filing. A Rule 12(b)(2) defense is waived if omitted from the first response under Fed. R. Civ. P. 12(h)(1). If you never sold or shipped the accused product into the forum, the reasoning of Advanced Tactical and Toys "R" Us is your starting point; if you did, NBA Properties will likely control in the Seventh Circuit.
4. Challenge joinder. A motion to sever or drop under Fed. R. Civ. P. 21 tests whether the plaintiff has any facts tying you to the other sellers. Severance changes the economics of the whole case.
5. Test the merits. Genuine goods, a mark that is similar but not substantially indistinguishable (which takes the case out of the counterfeiting remedies), goods outside the registration, or a fair use can each defeat or shrink the claim.
6. Know the exits. An entry of default can be set aside for good cause under Fed. R. Civ. P. 55(c), and a default judgment can be vacated under Fed. R. Civ. P. 60(b), including as void for lack of personal jurisdiction. Both are far harder than appearing on time.
7. Run the settlement math. Plaintiffs often offer to release most of the frozen balance for a payment and a stipulated injunction. Compare that with the cost of litigating, the strength of your defenses, and the fee exposure on both sides: a plaintiff who keeps a legitimate seller's money frozen after seeing proof of authenticity is building an exceptional-case record against itself under 15 U.S.C. § 1117(a).

If the case proceeds, the answer, defenses, and counterclaims follow ordinary federal practice; see Answering a Federal Complaint: Denials, Affirmative Defenses, Counterclaims, and Judgment on the Pleadings and, on fees, Lanham Act Attorney's Fees Under 15 U.S.C. § 1117(a): A Practical Guide.

Part three: the platform's side

A marketplace cannot rely on a statute, so it relies on a record. The elements below are the facts that won Tiffany and lost Akanoc, Coach, and Omega.

1. A notice channel that collects what you need: rights, registration, listing, seller, basis, and a good-faith statement.
2. Prompt action on specific notices, measured and logged. eBay removed most reported listings within hours; whatever the target, meet it and record it.
3. Account-level consequences: a written repeat-offender policy that is actually applied, with linked-account detection so that suspended sellers do not simply return under new names.
4. Attention to red flags about particular sellers. A platform that suspects a specific storefront and decides not to look is willfully blind; one that investigates and acts is not.
5. INFORM compliance. Collect bank, tax, and contact information within ten days after a seller qualifies as high-volume, verify it, require annual certification, suspend sellers who do not comply, provide a clear and conspicuous way for consumers to report suspicious conduct, and display the required disclosures. The FTC and state attorneys general enforce 15 U.S.C. § 45f, and violations are treated as violations of an FTC rule, which carries civil penalties.
6. A protocol for subpoenas and court orders. Identify the account, notify the user where appropriate, object under Rule 45 to overbroad or unduly burdensome requests (and seek protection from significant compliance expense), and comply with TROs that bind persons in active concert with the parties. Know when a court's order reaches you and when it does not (Gucci America, Inc. v. Weixing Li).
7. Do not become the seller. Producing, branding, and shipping goods under the platform's own name invites a direct-infringement theory (Ohio State).

The platform-side documents go further: Running a Platform That Hosts User Content: A Practical Guide, Platform Liability Toolkit: Terms of Service, Notice Procedures, and Litigation Defenses, Platform Content Moderation Checklist: A Practical Checklist, and Section 230 and Platform Liability: What the Statute Actually Says and Where It Stops.

How courts actually apply these rules

The same statute produces regional results, and three differences matter most when choosing a forum or assessing exposure.

Knowledge and willful blindness. The Second Circuit allows willful blindness to infringers' identities (Omega); the Ninth requires subjective belief in specific infringement and deliberate avoidance (Y.Y.G.M.) and makes control of the instrumentality an express element for service providers (Lockheed). The Sixth and Eleventh Circuits have affirmed liability against a flea market operator and mall owners after letters and police raids (Coach; Luxottica Group, S.p.A. v. Airport Mini Mall, LLC, 932 F.3d 1303 (11th Cir. 2019)), and the Third has applied the doctrine to a supplier that kept shipping to retailers after a demand letter (Lontex).

Personal jurisdiction over online sellers. The Seventh Circuit accepts a single sale of the accused product into the forum by a seller that structured its storefront to serve the forum (NBA Properties), while rejecting contacts unrelated to the claim (Advanced Tactical) and passive registrations (be2), and it has upheld jurisdiction where an online seller made hundreds of sales into the state (Curry v. Revolution Laboratories, LLC, 949 F.3d 385 (7th Cir. 2020)). The Second Circuit found jurisdiction where a single counterfeit shipment into New York was combined with substantial business activity there (Chloé v. Queen Bee of Beverly Hills, LLC, 616 F.3d 158 (2d Cir. 2010)). The Ninth Circuit looks for "something more" than an interactive website, such as regular sales of physical goods into the forum (Herbal Brands), building on Mavrix Photo, Inc. v. Brand Technologies, Inc., 647 F.3d 1218 (9th Cir. 2011). All of them now apply Walden v. Fiore, 571 U.S. 277 (2014), which focuses on the defendant's own contacts with the forum rather than the plaintiff's, and Ford Motor Co. v. Montana Eighth Judicial District Court, 592 U.S. 351 (2021), which allows claims that "relate to" those contacts even without strict causation. The Ninth Circuit's purposeful-direction analysis still builds on the effects test of Calder v. Jones, 465 U.S. 783 (1984), as narrowed by Walden, while the website "sliding scale" of Zippo Manufacturing Co. v. Zippo Dot Com, Inc., 952 F. Supp. 1119 (W.D. Pa. 1997) survives mainly as background. For foreign sellers with no single-state focus, Rule 4(k)(2) permits jurisdiction based on contacts with the United States as a whole, as in Plixer International, Inc. v. Scrutinizer GmbH, 905 F.3d 1 (1st Cir. 2018). The broader doctrine is collected in Personal Jurisdiction Over Online and Foreign Defendants: From Zippo to Ford Motor.

Schedule A practice. The model is the same everywhere, but individual judges differ on sealing, joinder, the size of bonds, the scope of asset restraints, and statutory damages at default. Some require separate actions for unrelated sellers or limit the number of defendants per case; others require evidence of a connection among sellers before granting a TRO; and many now tailor freezes to the accused sales. Read the assigned judge's standing orders before filing or appearing.

Evidence that carries each stage

Timeline and costs at a glance

These are planning figures for a typical program, not quotations; complexity, the number of sellers, and opposition move every number.

Strategy for each side

For the brand owner. Run a program, not a campaign: steady monitoring, accurate notices, and a log beat a burst of activity before a product launch. Put safety risks first, because they justify the expensive tools and persuade judges. Protect your credibility with the platforms by never reporting lawful resale as counterfeit. Use your distribution contracts, because the gray market problem usually starts inside your own channel. Litigate selectively, choosing defendants and forums where jurisdiction is clean and joinder is real, and keep the platform as an ally unless the record shows it has stopped acting on specific notices.

For the seller. Keep the paperwork that proves authenticity, buy from sources that can document their own supply, and do not use the brand's name as your storefront name or its photographs in your listings. Respond to every notice and letter promptly and in writing. If you are sued, appear. The defaults are what make enforcement cheap; a documented defense makes it expensive.

For the platform. Treat every notice as a future exhibit. Measure response times, apply the repeat-offender policy, link related accounts, act on specific red flags, comply with INFORM, and stay out of the seller's role. That record is the defense.

Worked example: a water filter brand clears three marketplaces

Clearwell (an invented company) sells pitcher filters and replacement cartridges under the registered mark CLEARWELL, covering water filtration units and replacement filter cartridges. The Monday-morning complaint from the opening of this guide turns out to be the visible edge of a larger problem: its monitoring vendor finds 310 listings for Clearwell cartridges on Amazon, Walmart Marketplace, and TikTok Shop, many priced 50 to 60 percent below retail, plus a standalone site at a lookalike domain promoted through social media ads.

Week 1: triage and the first mistake. Because a filter that does not filter is a health problem, counsel treats the matter as urgent and orders eighteen test purchases from the highest-volume and cheapest sellers, shipped to an investigator in Chicago. Clearwell files its Customs recordation the same week, later than it should have. Meanwhile, the monitoring vendor, acting under a standing authorization, reports forty listings as counterfeit before any test purchase arrives, including six listings belonging to Harbor Lane Goods, the reseller from the opening of this guide.

Weeks 2 and 3: the sort. The test purchases divide cleanly. Eleven are counterfeit: the carbon block is the wrong density, the lot codes match no production run, and the label's blue is visibly off against the exemplar. Three are gray market units made for the European market, with a different cartridge fit and no U.S. warranty. Two are genuine units with the lot codes scraped off. Two, including Harbor Lane's, are genuine U.S. units bought from a regional distributor on Clearwell's own authorized list. Harbor Lane, meanwhile, has done everything Part two recommends: it preserved its records, appealed to the marketplace with distributor invoices and photographs of intact lot codes, and wrote to Clearwell asking for a retraction. Clearwell retracts within a day, and Harbor Lane's listings are restored. Counsel then rewrites the vendor's instructions: no counterfeit report without a test purchase or infringement visible on the listing itself.

Week 3: notices. Clearwell reports the counterfeit listings through Amazon Brand Registry, Walmart's Brand Portal, and TikTok Shop's IP Protection Center, including the affiliate videos promoting the fakes, and files copyright notices for the listings that copied its product photographs. Most listings come down within three business days. The gray market and decoded listings get trademark (not counterfeit) reports where the platforms accept them and demand letters where the sellers are identifiable.

Week 4: escalation and identification. Fourteen storefronts relist within days. Counsel documents the links among them (identical photographs, the same return address, the same merchant descriptor on the test-purchase charges) and sends Amazon's brand-protection team a specific-notice letter listing every storefront, every prior notice, and every test-purchase result, with a request for account-level action and preservation of records. Nine accounts are suspended. INFORM disclosures identify two U.S. companies selling the decoded and European units. Both receive demand letters tailored to their piles. One complies and identifies its source, an overseas distributor shipping European stock into the United States in breach of its contract, which becomes a contract claim. The other complies after a follow-up call.

Weeks 6 to 26: the Schedule A case. Twenty-three storefronts remain, all apparently foreign, all of which shipped test purchases to Chicago. Clearwell files in the Northern District of Illinois, pleading the linking evidence in detail to support joinder, and obtains a sealed TRO restraining sales and freezing about $410,000 across the storefronts' marketplace and payment accounts, with email service authorized after counsel confirms that no physical address is known for any defendant. Three defendants appear. The first shows that $120,000 of its frozen balance came from kitchenware unrelated to the case, and the court narrows the freeze to the cartridge sales. The second points out that its test purchase was delivered to the investigator's Indiana office, not Chicago; Clearwell checks, confirms the error, and voluntarily dismisses that defendant rather than defend a jurisdictional theory it cannot support. The third settles for a payment roughly equal to its profits on the accused cartridges. The remaining twenty default. At the default-judgment stage, Clearwell supports its statutory damages request with the platforms' sales data and asks for awards scaled to each storefront's sales and willfulness rather than a uniform maximum. The court enters judgments that are collected from the frozen funds.

Border and domain. In month three, Customs detains two shipments of cartridges bearing the CLEARWELL mark, identifies the importer, and seizes the goods. Clearwell files a Uniform Rapid Suspension complaint against the lookalike domain, which is suspended within weeks.

What Clearwell did not do. It did not sue any marketplace, because each acted on specific notices, which is close to a complete defense under Tiffany. It did not send letters to sellers of compatible cartridges that described themselves as "fits Clearwell pitchers," because that is nominative use; it reviewed their ads for false claims instead. And after the vendor episode, it did not report anything as counterfeit without evidence.

Six months later. Counterfeit listings are down about 80 percent. The program costs Clearwell a monitoring fee each month, a few thousand dollars in test purchases, and roughly $50,000 in fees through the Schedule A defaults, and the frozen balances more than covered the litigation. The remaining work is maintenance: weekly monitoring, prompt notices, and an annual review of the authorized-seller list. Harbor Lane, for its part, removed the Clearwell photographs from its listings, replaced them with its own, and applied to become an authorized reseller.

Common mistakes

• Reporting before testing. A counterfeit report without a test purchase or visible infringement is a guess, and a wrong guess costs credibility with the platform and can cost money in a counterclaim.
• Calling everything counterfeit. Gray market, decoded, and lookalike listings are different claims with different remedies. Mislabeling them weakens statutory damages and invites challenges.
• Registering too narrowly. A registration that does not cover the goods being counterfeited does not support the counterfeiting remedies or many platform programs.
• Skipping the chain of custody. The exhibit in court has to be the item the seller shipped, and someone has to be able to say so.
• Sending general letters to platforms. After Tiffany, "your site is full of fakes" is not notice of anything. Identify listings and sellers.
• Shipping test purchases to the wrong place. In a Schedule A case, each defendant's forum contact is usually the test purchase, so the delivery address is a jurisdictional fact.
• Overreaching on the freeze. Restraining an entire account when the accused sales are a fraction of it invites a motion to modify and undermines the plaintiff's credibility for everything else.
• Pleading joinder by template. A complaint that asserts coordination without facts invites severance under Rule 21.
• Defaulting. For sellers, ignoring an emailed summons is the most expensive mistake available. If the court authorized email service, the case is real.
• Relisting after a takedown. It converts an authenticity dispute into a willfulness case.
• Platforms: writing a repeat-offender policy and not applying it. Courts look at what was done with the notices, not at the terms of service.
• Waiting. Months of tolerating known counterfeits can rebut the presumption of irreparable harm and weakens every request for emergency relief. See Preliminary Injunctions and Temporary Restraining Orders: Emergency Relief in Federal Court.

Frequently asked questions

Do I need a lawyer to file platform takedown notices? No. Brand programs are designed for brand owners and their staff, and many brands run notices in house or through a monitoring vendor. Bring in counsel to set the rules (what gets reported, under which category, with what evidence), to handle escalations and demand letters, and for anything that involves a court.

What if a marketplace does not act on my notices? First check the notice: wrong category, missing registration, no listing ID, or no basis are the usual reasons for rejection. If the notices are right and the platform still does not act, escalate in writing to its brand-protection or legal team with the full history, and ask for preservation of the records. That letter is the foundation of a contributory claim if one is ever needed, and it usually produces action long before then.

Can I make the platform tell me who the seller is? Sometimes without a lawsuit: INFORM requires marketplaces to disclose larger high-volume sellers' names and addresses to consumers, on the listing page or in the order confirmation, and some platforms share seller contact details with verified rights owners. Otherwise you need legal process, which in trademark cases means filing suit and seeking leave for early discovery, then subpoenaing the platform and payment processors. There is no trademark equivalent of the DMCA's pre-suit subpoena.

Should I report gray market goods as counterfeit? No. They are genuine goods; if they are materially different from the U.S. version, they may infringe, but they are not counterfeit, and reporting them that way is inaccurate. Use the platform's trademark category where it accepts material-differences claims, demand letters, and Customs gray market protection, and fix the leak in your distribution channel.

What happens to the money frozen in a Schedule A case? It stays restrained until the court orders otherwise. Defendants who appear can seek to narrow the freeze to the profits plausibly at issue or to release it entirely if the claim fails. Defendants who default typically see the frozen funds applied to the statutory damages judgment. Settlements usually specify how much is released and how much goes to the plaintiff.

I am a seller outside the United States and received an email saying I have been sued in Illinois. Is that real? Check the court's public docket for the case number and look for an order authorizing service by email. If the court authorized it under Rule 4(f)(3), service is likely valid even though you never received paper, and the deadline to respond is running. Phishing exists, so verify through the docket rather than through links in the email, but do not ignore it.

Can a brand stop me from reselling genuine products? Generally no. Reselling genuine goods under their own mark is lawful under the first sale doctrine, so long as the goods are not materially different from what the brand sells here, are not altered or decoded, and are described accurately. Brands can control resale through contracts with their own distributors, but those contracts bind the distributors, not you, unless you agreed to them (although a reseller who knowingly induces a distributor to breach its contract can face a tortious interference claim; see Tortious Interference and Unfair Competition Claims Between Businesses).

Can I say my product is compatible with a brand? Usually yes, if you use only as much of the mark as needed to identify the product it fits, do not use the brand's logo or packaging style, and do not suggest sponsorship. That is nominative use. See Trademark Fair Use: Descriptive Use, Nominative Use, and Expressive Works After Jack Daniel's and Trademark Fair Use Toolkit: Nominative Use Guidelines, Comparative Advertising Clearance, and Defense Briefing.

Practical takeaways

• Foundation first. Registrations covering the goods, the ® notice, brand program enrollment, Customs recordation, and genuine exemplars make every later step faster and cheaper.
• Test, then report. Test purchases with a chain of custody are the evidence behind counterfeit claims, and they also establish jurisdiction.
• Sort the piles. Counterfeit, infringing, gray market, decoded, lawful resale, and nominative use each call for a different response, and two of them call for none.
• Make notices specific and keep a log. Listing-level notices remove listings and build the record that either protects a platform or exposes it.
• Use INFORM and the money trail to find sellers, and remember that compelled identification requires a lawsuit.
• Match the demand to the pile, and threaten only what you will do.
• Run Schedule A cases honestly. Real joinder facts, test purchases into the forum, proportionate freezes, and damages tied to evidence are what survive scrutiny.
• Treat the platform as a partner until the record says otherwise. A contributory claim needs specific notices, continued service, and, in the Ninth Circuit, control.
• Sellers: document, respond, appear. Invoices and intact codes win appeals; prompt appearances win Schedule A cases or at least shrink them.
• Platforms: the record is the defense. Measure response times, apply the repeat-offender policy, act on specific red flags, comply with INFORM, and stay out of the seller's role.

This document is general information, not legal advice for any particular situation; the law changes, and the facts matter.

Related Documents

Related Articles

• Trademark Liability Online: Keyword Advertising, Marketplaces, and Contributory Infringement After Tiffany v. eBay: the doctrine behind this guide, from keyword advertising to Tiffany, Omega, and the Redbubble cases.
• Counterfeiting, Seizure Orders, and Schedule A Litigation: Fighting Fakes in Federal Court: counterfeiting remedies, ex parte seizures, and the criticism of Schedule A practice.
• Brand Protection Online: A Strategic Guide for Businesses: building an online brand protection program across channels.
• Gray Market Goods and the First Sale Doctrine: Parallel Imports, Material Differences, and Exhaustion: when genuine goods infringe and when resale is protected.
• Unmasking Anonymous Online Speakers: John Doe Subpoenas, the Dendrite and Cahill Tests, and the First Amendment: the standards for identifying anonymous users through platform subpoenas.
• Personal Jurisdiction Over Online and Foreign Defendants: From Zippo to Ford Motor: the jurisdiction law that decides where online sellers can be sued.
• Section 230 and Platform Liability: What the Statute Actually Says and Where It Stops: why Section 230 does not reach trademark claims.
• Capturing the Web: A Practitioner's Guide to Authenticating Website Screenshots as Evidence in Federal Court: making online captures admissible.
• Answering a Federal Complaint: Denials, Affirmative Defenses, Counterclaims, and Judgment on the Pleadings: what a defendant who appears must file next.

Related Guides

• Stopping Gray Market and Counterfeit Imports: A Practical Guide: Customs recordation, detentions, seizures, and gray market protection.
• Identifying an Anonymous Defendant Online: A Practical Guide: early discovery motions and subpoenas to marketplaces, hosts, and payment processors.
• Asserting or Defeating a Trademark Fair Use Defense: A Practical Guide: nominative and descriptive fair use for resellers, repair shops, and comparative advertisers.
• Choosing the Right Domain Name Dispute Procedure: A Practical Guide: UDRP, URS, and in rem options for lookalike storefront domains.
• Running a Platform That Hosts User Content: A Practical Guide: notice systems, repeat-offender policies, and records for platform operators.
• Distribution, Reseller, and Channel Partner Agreements: A Practical Guide: contract terms that keep goods out of unauthorized channels.

Related Checklists

• Online Marketplace Trademark Enforcement Checklist: A Practical Checklist: this guide's steps in checklist form.
• Authenticating Website Evidence: A Practical Checklist: capture and authentication steps for listings and storefronts.
• Customs IP Enforcement Checklist: A Practical Checklist: recordation and responses to Customs notices.
• Drafting a Trademark Cease-and-Desist Letter Checklist: A Practical Checklist: the contents of an effective demand letter.
• Responding to a Trademark Cease-and-Desist Letter Checklist: A Practical Checklist: the recipient's side of the same letter.
• Preliminary Injunction and TRO Application Checklist: A Practical Checklist: assembling TRO and asset-freeze papers.
• Anonymous Speaker Unmasking Checklist: A Practical Checklist: the showings courts require before ordering disclosure.
• Litigation Hold and Evidence Preservation Checklist: A Practical Checklist: preservation steps for both brand owners and sellers.

Related Toolkits

• Online Trademark Enforcement Toolkit: Platform Notices, Test Purchase Records, and Contributory Liability Demands: notice templates, test-purchase logs, chain-of-custody forms, and specific-notice letters to platforms.
• Online Brand Protection Toolkit: A Strategic Roadmap and Resource Library: program design and monitoring resources.
• Border Enforcement Toolkit: Recordations, Seizure Responses, and Gray Market Programs: recordation applications and seizure responses.
• John Doe Litigation Toolkit: Early Discovery Motions, Platform Subpoenas, and Motions to Quash: motions and subpoenas for identifying sellers.
• Trademark Enforcement and Litigation Toolkit: From Watching to Verdict and Appeal: the full enforcement and litigation document set.
• Platform Liability Toolkit: Terms of Service, Notice Procedures, and Litigation Defenses: the platform-side forms that build a Tiffany record.
• Nonparty Discovery Toolkit: Subpoenas, Third-Party Records, and Privilege: subpoenas to marketplaces and payment processors, and responses to them.