Online Marketplace Trademark Enforcement Checklist: A Practical Checklist

Summary. This checklist turns online marketplace trademark enforcement into concrete tasks, organized in the order the work happens, for brand owners and for the sellers, platforms, landlords, and payment processors on the other side. It starts with the preparation that makes enforcement possible (registrations, platform enrollment, Customs recordation, authentication guides, and distribution terms) and then covers monitoring and evidence capture, sorting listings into counterfeit, gray market, altered, and lawfully resold goods before anything is reported, and test purchases with a documented chain of custody. The middle phases cover platform notices that will hold up later, escalation against repeat sellers, the written notices that build or defeat a contributory infringement claim under Inwood and Tiffany v. eBay, and demand letters to sellers who can be identified. The litigation phases cover Schedule A complaints, ex parte restraining orders and asset freezes, alternative service, expedited discovery, default judgments, and statutory damages under 15 U.S.C. § 1117(c). Separate sub-checklists address keyword advertising, sellers responding to takedowns and demands, and platforms and other intermediaries that receive notices. Red flags, an FAQ, and practical takeaways close the document.

The counterfeit problem usually arrives as a spreadsheet: four hundred listings across three marketplaces, prices at a third of retail, and a founder who wants everything gone by Friday. The fastest way to make that problem worse is to report all four hundred as counterfeit. What actually ends it is slower, more specific, and mostly clerical, and this checklist is the list of that work.

The short answer

• Brand owners: register the marks for the goods actually sold, enroll in each marketplace's brand program, sort listings before reporting them, prove counterfeit status with test purchases rather than photographs, send listing-level notices, and keep a log of every notice and every response. The log is your evidence against sellers and, if a platform stops responding, against the platform.
• Platforms, hosts, landlords, and payment processors: liability for a user's infringement requires intentional inducement or continued service to someone you know or have reason to know is infringing, Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982), and general awareness of counterfeiting is not enough, Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010). Act on specific notices, investigate specific red flags, and write down what you did.
• Sellers: a takedown is not a judgment, but silence reads as guilt. Answer with invoices and supply-chain proof, stop selling anything materially different from the authorized product, and never relist under a new account.
• Everyone: there is no trademark version of the DMCA safe harbor in 17 U.S.C. § 512, and 47 U.S.C. § 230(e)(2) excludes intellectual property claims from Section 230 immunity. The rules come from case law and from each platform's private program.

For the doctrine behind each item, see Trademark Liability Online: Keyword Advertising, Marketplaces, and Contributory Infringement After Tiffany v. eBay. For the step-by-step narrative, see Enforcing Trademarks Against Online Sellers and Platforms: A Practical Guide. The forms referred to below (capture logs, test purchase records, notices, and demand letters) are in the Online Trademark Enforcement Toolkit: Platform Notices, Test Purchase Records, and Contributory Liability Demands.

How to use this checklist

Phases 1 through 9 follow a brand owner's enforcement program from preparation to judgment. Most programs run several phases at once: new listings enter Phase 2 every week while older sellers move through Phases 6 to 8. The sub-checklists that follow are for keyword advertising disputes, for sellers on the receiving end of a takedown or demand letter, and for platforms and other intermediaries. Each item is a task; the notes under some items explain why the task matters and cite the authority. Lawyers can use the list to staff and audit an enforcement program; business owners can use it to see whether the program they are paying for is being run properly.

Phase 1: Get ready before the first counterfeit wave

• Confirm that a current federal registration covers each mark as it actually appears online (word mark, logo, and label) and the goods actually sold. Note: counterfeiting remedies require a registered mark used on the goods for which it is registered, 15 U.S.C. § 1116(d)(1)(B), and most platform programs require a registration. A registration is prima facie evidence of validity, ownership, and the exclusive right to use the mark, 15 U.S.C. § 1057(b), and once incontestable it becomes conclusive evidence subject to listed defenses, 15 U.S.C. § 1115(b). See Benefits of Federal Trademark Registration.
• File applications for marks in use but not yet registered: sub-brands, product names, packaging designs, and the accessory classes counterfeiters favor.
• Use the ® symbol or the statutory notice on products, packaging, and your own listings. Note: without notice, a registrant cannot recover profits or damages unless the defendant had actual notice of the registration, 15 U.S.C. § 1111. A demand letter that cites the registration number supplies actual notice from the day it arrives.
• Record each registration with U.S. Customs and Border Protection under 19 C.F.R. Part 133, including images of genuine goods and a list of authorized importers. Note: recordation lets Customs detain and seize counterfeit imports under 19 U.S.C. § 1526 and 15 U.S.C. § 1124. See the Customs IP Enforcement Checklist.
• Enroll in each marketplace's brand program: Amazon Brand Registry, eBay VeRO, Walmart Brand Portal, TikTok Shop's IP Protection Center, Alibaba's IP Protection Platform, and Etsy's IP reporting process, plus any marketplace where your goods actually sell.
• Name one authorized agent per program, route notices to a monitored inbox, and record each program's login, forms, and response channel in one place.
• Decide whether high-risk products justify serialization (Amazon Transparency or your own unit codes) and keep lot-code records that let you say whether a particular code was ever issued.
• Write a confidential product authentication guide: genuine and known-fake features, packaging, typography, closures, fill weights, lot-code formats, and what changes between production runs. Note: keep it internal. A public guide teaches counterfeiters what to fix.
• Keep a current list of authorized resellers with their storefront names and seller IDs, so monitoring can screen them out.
• Review distribution and reseller agreements for marketplace restrictions, quality-control duties, warranty terms tied to authorized channels, and audit rights. Note: the material-differences theory against unauthorized resellers depends on quality-control procedures you actually follow, Warner-Lambert Co. v. Northside Development Corp., 86 F.3d 3 (2d Cir. 1996), and on differences that matter to buyers, such as loss of warranty and service eligibility, Beltronics USA, Inc. v. Midwest Inventory Distribution, LLC, 562 F.3d 1067 (10th Cir. 2009). See Distribution, Reseller, and Channel Partner Agreements: A Practical Guide and the Trademark License and Quality Control Checklist.
• Name an enforcement owner, an escalation path to counsel, and a monthly budget, and decide who is authorized to sign notices and certifications.
• Set a retention rule for enforcement records (captures, test purchases, notices, platform responses) that lasts at least as long as any claim you might bring. See the Litigation Hold and Evidence Preservation Checklist.

Phase 2: Monitor and capture listings

• Build a search list: each mark, common misspellings and transliterations, product and model names, and the vocabulary of fakes ("replica," "1:1," "AAA," "mirror quality," "inspired by," "dupe").
• Add reverse image searches for your product photographs, which counterfeiters routinely copy.
• Define the monitoring scope: marketplaces, social commerce (shoppable videos, livestreams, and marketplace groups), standalone storefront domains, and search ads triggered by your marks.
• For each suspect listing, capture the URL, the listing or item number (ASIN, eBay item number, or equivalent), seller name and seller ID, storefront URL, price, units sold or available, images, stated ship-from location, and the date and time with time zone.
• Capture in a way you can authenticate later: full-page captures with the URL and timestamp visible, native files or web archive files where the tool supports them, hash values, and a log entry naming the person who made each capture. Note: the usual foundation is testimony from the person who made the capture, Fed. R. Evid. 901(b)(1), or evidence about the capture process, Rule 901(b)(9); certified electronic records can be self-authenticating under Fed. R. Evid. 902(13) and (14). Lorraine v. Markel American Insurance Co., 241 F.R.D. 534 (D. Md. 2007), remains the standard tour of electronic-evidence foundations. See the Authenticating Website Evidence: A Practical Checklist and Capturing the Web: A Practitioner's Guide to Authenticating Website Screenshots as Evidence in Federal Court.
• Capture the seller-identity disclosure on each listing or storefront page. Note: the INFORM Consumers Act, 15 U.S.C. § 45f, requires marketplaces to disclose the name, physical address, and contact information of high-volume sellers with $20,000 or more in annual gross revenue on the platform (with a narrower disclosure for some sellers who operate from a residence). The disclosure is a lead, not proof.
• Treat identity as something to prove, not assume. Note: a page bearing a person's name is not, by itself, proof that the person created or controls it, United States v. Vayner, 769 F.3d 125 (2d Cir. 2014). Link storefronts to people through payment records, shipping labels, platform records, and admissions.
• Save reviews, questions, and complaints that show confusion or quality problems, with dates and reviewer handles.
• Re-capture listings that change price, images, or seller, and keep every version.
• Log each capture in the enforcement tracker on the day it is made, with a unique listing reference you will reuse in every later document.

Phase 3: Sort the listings before you report anything

Every listing goes into one pile before any notice is sent, because the legal theory, the right platform form, and the risk of a false report all differ by pile.

• Do not classify a listing as counterfeit until a test purchase or a qualified examination supports it. Counterfeit listings often use your own stolen photographs, so the picture proves nothing.
• Check every reseller of genuine goods against the authorized-seller list before reporting it; an unauthorized seller of genuine, unaltered goods is a contract problem at most.
• For gray market and altered goods, write down the specific differences (formula, labeling language, warranty, serial codes, packaging) and why a buyer would care. Note: the First Circuit holds that any difference consumers would likely consider relevant to a purchase is material, and calls the threshold low (Nestle); foreign-language adoption papers were enough in Original Appalachian Artworks, Inc. v. Granada Electronics, Inc., 816 F.2d 68 (2d Cir. 1987). See Gray Market Goods and the First Sale Doctrine: Parallel Imports, Material Differences, and Exhaustion.
• Screen dupe and comparison listings for nominative use: only as much of the mark as needed, no logo or stylization, and nothing suggesting sponsorship, New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302 (9th Cir. 1992); Toyota Motor Sales, U.S.A., Inc. v. Tabari, 610 F.3d 1171 (9th Cir. 2010). See the Trademark Fair Use Analysis Checklist.
• Flag "same formula" and "identical to" claims in dupe listings for false advertising review under 15 U.S.C. § 1125(a)(1)(B).
• Record the pile and a one-sentence reason in the tracker for every listing. Note: trademark complaints have no statutory good-faith standard, but the copyright analog shows where courts look: a DMCA sender must consider fair use before sending a takedown notice, Lenz v. Universal Music Corp., 815 F.3d 1145 (9th Cir. 2016). A brand that reports genuine goods as fake loses platform credibility and invites tortious interference and unfair competition claims. The first sale cases, and their limits, are collected in Kurtis A. Kemper, Annotation, Construction and Application of "First Sale Doctrine" in Trademark Law, 71 A.L.R. Fed. 2d 1 (2013).

Phase 4: Make test purchases and keep the chain of custody

• Choose which listings to buy by risk and value: the highest-volume sellers, the lowest prices, sellers claiming "authentic" or "authorized," and one listing per suspected seller network.
• Use an investigator or paralegal as the purchaser, never the lawyer who will argue the case. Note: buying as an ordinary consumer is an accepted investigative technique, Gidatex, S.r.L. v. Campaniello Imports, Ltd., 82 F. Supp. 2d 119 (S.D.N.Y. 1999); Apple Corps Ltd. v. International Collectors Society, 15 F. Supp. 2d 456 (D.N.J. 1998). Instruct the purchaser to conduct an ordinary transaction and not to question a seller known to be represented by counsel about the dispute, and check the forum's ethics rules on investigator deception.
• Buy from an account and payment method not linked to the brand, and record the payee name and payment processor shown at checkout. Note: the payee is often the best lead to the person behind the storefront and to the account a court can later freeze.
• Ship to an address in the district where you expect to sue if jurisdiction may be contested. Note: a seller that accepts an order through its interactive storefront and ships it into the forum has created its own forum contact, NBA Properties, Inc. v. HANWJH, 46 F.4th 614 (7th Cir. 2022); Herbal Brands, Inc. v. Photoplaza, Inc., 72 F.4th 1085 (9th Cir. 2023). Jurisdiction must rest on the defendant's own conduct, not the plaintiff's, Walden v. Fiore, 571 U.S. 277 (2014). See Personal Jurisdiction Over Online and Foreign Defendants: From Zippo to Ford Motor.
• Capture the listing immediately before purchase, then the cart, order confirmation, payment receipt, shipping notices, and tracking history.
• Photograph the parcel unopened (labels, return address, postage, customs forms), then open it on continuous video and photograph each item next to a genuine exemplar.
• Assign an exhibit number, seal and label the item, start a chain-of-custody log signed by each person who handles it, and store it in a locked location.
• Have a qualified person examine the item against the authentication guide and write a short report naming each feature that shows it is not genuine. For cosmetics, supplements, batteries, and other consumables, add lab testing where safety may be at issue.
• Prepare a declaration for each purchaser and examiner under 28 U.S.C. § 1746, which permits an unsworn declaration under penalty of perjury in place of a notarized affidavit.
• Where many purchases support a motion, prepare a summary chart under Fed. R. Evid. 1006 and keep the underlying captures available for inspection.
• Preserve the seller's messages. Statements in a seller's listing or messages are not hearsay when offered against that seller as an opposing party's statements, Fed. R. Evid. 801(d)(2).

Phase 5: Send platform notices that will hold up later

• Use the trademark or counterfeit form for trademark complaints and the DMCA form only for copyrighted photographs or text. Note: a copyright notice must meet 17 U.S.C. § 512(c)(3), and a knowing material misrepresentation in one creates liability under § 512(f). Using the DMCA form for a trademark complaint is both defective and risky. Copied product photographs are the exception, and a fast one; Stacy D. Fredrich & Karissa F. Blyth, Protecting and Enforcing IP in the Online Marketplace: A Case Study in Widgets, 31 No. 9 Intell. Prop. & Tech. L.J. 10 (2019), walks through using copyright, design patent, and trademark tools together. For the copyright side, see Filing a DMCA Takedown Notice: A Practical Checklist.
• Identify the registration number, the mark, and the registered goods, and attach the certificate where the form allows.
• Identify each listing by URL and listing number and the seller by name and seller ID.
• State the specific basis ("test purchase TB-014 was counterfeit: lot code 22K19 was never issued, and the closure and fill weight differ from genuine"), not just the word "counterfeit."
• Choose the correct category: counterfeit, trademark infringement, or other. Never report gray market or altered genuine goods as counterfeit.
• Request action against the seller account, not only the listing, for confirmed counterfeiters, and ask for seller contact information where the program provides it.
• Make only the certifications you can truthfully make, keep a copy of each submission with its confirmation number, and log the date sent.
• Track time to action and follow up on any notice not resolved within a set period (five business days is a common internal standard).
• Retract promptly any notice you learn was mistaken, in writing, through the platform's retraction process.
• Use automated or self-service removal privileges (such as Amazon Project Zero) only for high-confidence calls, and audit a sample of removals each month.
• Report safety hazards (burns, contamination, overheating) separately through the platform's product safety channel. Note: under Tiffany, what a platform knows about particular listings and sellers, usually from your notices, decides its exposure, and eBay's practice of removing reported listings within 24 hours (most within 12) was central to its defense. Your notices are the evidence of what each platform knew and when. If the matter reaches court, a well-documented notice file is what proves willfulness against the seller and, if it comes to that, knowledge against the platform.

Phase 6: Escalate repeat sellers and build the knowledge record

• Link storefronts that belong to one operation: shared product photographs, identical typos, the same return address, customer-service email, or payee. These links later support joinder, willfulness, and account-level relief.
• After a set number of confirmed counterfeits from one seller (three is common), send an account-level escalation listing every prior notice by date and reference.
• If a platform reinstates documented sellers or stops acting on notices, write to its legal department identifying the specific sellers and listings, the prior notices, the test purchase results, and the action requested. Note: this letter is where contributory liability is made or lost. Continuing to serve "one whom it knows or has reason to know is engaging in trademark infringement" is the Inwood standard; Tiffany requires knowledge of particular listings or sellers; and a defendant may be willfully blind "either to particular transactions or to the identities of infringers," Omega SA v. 375 Canal, LLC, 984 F.3d 244 (2d Cir. 2021). The cases are collected in 4 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §§ 25:17 to 25:20.50 (5th ed.), including landlords (§ 25:20) and internet intermediaries (§ 25:20.50), and the supplier rule is restated in Restatement (Third) of Unfair Competition § 27 (1995). The Ninth Circuit requires a subjective belief that infringement was likely plus deliberate steps to avoid learning more, Y.Y.G.M. SA v. Redbubble, Inc., 75 F.4th 995 (9th Cir. 2023).
• Match the letter to the intermediary:
  • Hosts: identify the hosted sites and ask that service be terminated. A host that ignored at least eighteen notices was held liable as a contributory infringer because it controlled the "master switch," Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., 658 F.3d 936 (9th Cir. 2011).
  • Landlords and market operators: give dates, photographs, and any raid history. See Coach, Inc. v. Goodfellow, 717 F.3d 498 (6th Cir. 2013); Luxottica Group, S.p.A. v. Airport Mini Mall, LLC, 932 F.3d 1303 (11th Cir. 2019); Hard Rock Cafe Licensing Corp. v. Concession Services, Inc., 955 F.2d 1143 (7th Cir. 1992).
  • Registrars and other pure conduits: expect to lose on control, Lockheed Martin Corp. v. Network Solutions, Inc., 194 F.3d 980 (9th Cir. 1999); use domain procedures instead (see Choosing the Right Domain Name Dispute Procedure: A Practical Guide).
  • Payment processors: identify the merchant accounts and the transactions. Whether the service is essential to the infringing sale divides the cases, compare Perfect 10, Inc. v. Visa International Service Ass'n, 494 F.3d 788 (9th Cir. 2007), with Gucci America, Inc. v. Frontline Processing Corp., 721 F. Supp. 2d 228 (S.D.N.Y. 2010).
  • Affiliate and ad networks: ask for a network-wide instruction. Where one message to every affiliate would stop the infringement, not knowing which affiliate is responsible is no excuse, 1-800 Contacts, Inc. v. Lens.com, Inc., 722 F.3d 1229 (10th Cir. 2013).
• Include a preservation demand for seller records, communications, and notice logs in the same letter.
• Do not rely on a letter that says only "your site is full of counterfeits." General knowledge does not create liability, so a general letter does not create evidence.
• Keep the platform as the defendant of last resort. Naming it in the first complaint usually buys a motion to dismiss and loses the cooperation you need.
• If you do sue a platform, plead around the Section 230 split for state-law claims: the Third Circuit applies the intellectual property exception to state IP claims, Hepp v. Facebook, 14 F.4th 204 (3d Cir. 2021), while the Ninth limits it to federal IP, Perfect 10, Inc. v. CCBill LLC, 488 F.3d 1102 (9th Cir. 2007). See Section 230 and Platform Liability: What the Statute Actually Says and Where It Stops.

Phase 7: Send demand letters to sellers you can identify

• Identify the seller from the INFORM disclosure, state business registries, the test purchase return address, the payee, and domain registration data. If a court order is needed, see Identifying an Anonymous Defendant Online: A Practical Guide.
• Write the letter for the seller's pile. Counterfeit, gray market, and altered-goods sellers get different letters with different evidence.
• State the demands precisely: stop sales, identify suppliers and quantities, account for sales, surrender or destroy inventory, preserve records, and sign a written undertaking.
• Cite the registration numbers, which supplies actual notice under § 1111 and fixes the date from which later sales are knowing.
• Assess declaratory judgment risk before threatening suit. A letter that creates a real and immediate controversy may let the recipient sue first, in its own forum, MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007). Letters alone ordinarily do not subject the sender to jurisdiction in the recipient's forum, Red Wing Shoe Co. v. Hockerson-Halberstadt, Inc., 148 F.3d 1355 (Fed. Cir. 1998), a Federal Circuit patent decision often cited in trademark disputes. See the Declaratory Judgment Checklist.
• Confirm the claim is well founded. Pre-suit demand letters are protected petitioning activity unless they are shams, Sosa v. DIRECTV, Inc., 437 F.3d 923 (9th Cir. 2006), and a baseless threat sent to a seller's customers or platform can support tortious interference claims. See Tortious Interference and Unfair Competition Claims Between Businesses.
• Label settlement proposals under Fed. R. Evid. 408, remembering that the rule bars use of compromise offers to prove or disprove the claim but not every other use.
• Set a deadline of seven to fourteen days, calendar the follow-up, and decide in advance what happens if the seller ignores it.
• Use the Drafting a Trademark Cease-and-Desist Letter Checklist for tone and structure.

Phase 8: Sue anonymous sellers in a Schedule A case, or identified sellers conventionally

• Choose the claims: 15 U.S.C. § 1114 for registered marks, § 1125(a) for unregistered rights, counterfeiting for the statutory remedies, and state unfair competition if it adds something.
• Confirm jurisdiction evidence for every defendant (a test purchase shipped to the forum for each storefront) and plead it storefront by storefront.
• Plead the facts that link defendants (shared images, payees, addresses, listing text) to satisfy Fed. R. Civ. P. 20, and expect the court to sever under Rule 21 if the links are thin.
• Prepare the ex parte TRO under Fed. R. Civ. P. 65(b): specific facts showing immediate irreparable harm before the defendants can be heard, and counsel's written certification of the efforts made to give notice and why notice should not be required. Note: the Second Circuit long ago recognized that counterfeiters given notice tend to move or destroy inventory, In re Vuitton et Fils S.A., 606 F.2d 1 (2d Cir. 1979). Irreparable harm is now presumed on a showing of likely success, 15 U.S.C. § 1116(a), but the other Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008) factors still apply. See 5 McCarthy § 30:34 (ex parte orders in counterfeiting cases); 11A Charles Alan Wright, Arthur R. Miller & Mary Kay Kane, Federal Practice and Procedure § 2951 (3d ed.); and the Preliminary Injunction and TRO Application Checklist.
• Tie any asset restraint to the equitable accounting of profits and size it to the likely recovery. Note: an accounting takes the case outside the bar on prejudgment freezes in Grupo Mexicano de Desarrollo, S.A. v. Alliance Bond Fund, Inc., 527 U.S. 308 (1999). See 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). Enforcing a freeze against a nonparty bank's overseas assets requires personal jurisdiction over the bank and attention to comity, Gucci America, Inc. v. Weixing Li, 768 F.3d 122 (2d Cir. 2014).
• Propose a bond under Rule 65(c) and prepare the service package that gives marketplaces and payment processors actual notice of the order, which binds those in active concert with the defendants under Rule 65(d)(2).
• If physical goods must be seized, satisfy every element of § 1116(d): a counterfeit of a registered mark, notice to the U.S. Attorney, security, sealing, a hearing ten to fifteen days later, and execution by law enforcement.
• Seek alternative service under Fed. R. Civ. P. 4(f)(3), approved for elusive online defendants in Rio Properties, Inc. v. Rio International Interlink, 284 F.3d 1007 (9th Cir. 2002), after checking whether the Hague Service Convention applies and what the defendant's country has objected to, Water Splash, Inc. v. Menon, 581 U.S. 271 (2017). See Serving a Foreign Defendant Under the Hague Convention: A Practical Checklist.
• Move for expedited discovery under Fed. R. Civ. P. 26(d) and serve marketplace and processor subpoenas under Fed. R. Civ. P. 45 for seller identities, sales data, and account balances, using the early-discovery showing in Columbia Insurance Co. v. Seescandy.com, 185 F.R.D. 573 (N.D. Cal. 1999). The forms are in the John Doe Litigation Toolkit: Early Discovery Motions, Platform Subpoenas, and Motions to Quash.
• Confirm each named storefront has its own evidence file before filing; Fed. R. Civ. P. 11 applies defendant by defendant.
• For defendants who do not appear, seek default under Fed. R. Civ. P. 55 with a damages record; for those who appear, have a settlement matrix ready.

Phase 9: Remedies, collection, and closing the file

• Elect statutory or actual damages, which 15 U.S.C. § 1117(c) allows at any time before final judgment. Statutory damages run from $1,000 to $200,000 per counterfeit mark per type of goods, and up to $2,000,000 per mark per type of goods for willful use. See 87 C.J.S. Trademarks, Etc. § 369.
• Build the willfulness record: ignored notices, relisting under new accounts, false identity information, and refusal to produce sales records. Note: a defendant's failure to produce records supported an inference of a large counterfeiting operation, and a plaintiff that elects statutory damages may still recover fees under § 1117(a) in an exceptional case, Louis Vuitton Malletier S.A. v. LY USA, Inc., 676 F.3d 83 (2d Cir. 2012).
• Where real sales figures exist, compare the statutory range with trebled profits or damages under § 1117(b). Willfulness is not a precondition to a profits award, Romag Fasteners, Inc. v. Fossil, Inc., 590 U.S. 212 (2020).
• Remember that contributory infringers are jointly and severally liable for the same award (Akanoc; Omega), and that only infringing uses in commerce in the United States count, Abitron Austria GmbH v. Hetronic International, Inc., 600 U.S. 412 (2023).
• Ask for destruction of infringing goods under 15 U.S.C. § 1118 and for an order releasing frozen balances toward the judgment; execute on the rest under Fed. R. Civ. P. 69. See the Judgment Enforcement and Collections Toolkit.
• Keep monitoring after judgment and move for contempt when enjoined sellers reappear.
• Refer large or dangerous operations to law enforcement; trafficking in counterfeit goods is a federal crime under 18 U.S.C. § 2320.
• Measure the program each quarter: listings removed, median days to removal, relisting rate, recoveries, and cost per removal. Update the authentication guide and search terms as counterfeiters adapt.

Keyword advertising sub-checklist

• Capture the ad, the query that triggered it, the date, location, and device, and the landing page.
• Classify the problem: your mark used only as a keyword (weak claim), your mark in the ad text (stronger), or an ad or landing page that impersonates you with "official," "login," or your trade dress (strongest).
• For ad-text misuse, file the ad platform's trademark complaint. In the United States, Google restricts trademarks in ad text on complaint but does not restrict keyword bidding; check each platform's current policy.
• Bid on your own mark and strengthen your organic result; this is cheaper than any lawsuit.
• Log every confused customer with the date, channel, search terms, and what the customer said. Note: courts compare confused contacts with total exposure. In Lerner & Rowe PC v. Brown Engstrand & Shely LLC, 119 F.4th 711 (9th Cir. 2024), 236 calls against 109,322 impressions (about 0.2 percent) did not show likely confusion, and Lens.com treated 1.5 percent as too little even assuming every click was confused.
• Know the forum: the Second Circuit dismisses bare keyword claims on the pleadings, 1-800 Contacts, Inc. v. JAND, Inc., 119 F.4th 234 (2d Cir. 2024), and the Ninth focuses on labeling and ad content, Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011).
• Ask a competitor to remove your mark from ad text and display URLs. Do not propose a mutual agreement not to bid on each other's marks without antitrust review. Note: such agreements drew years of FTC litigation before the Second Circuit vacated the Commission's order, 1-800 Contacts, Inc. v. Federal Trade Commission, 1 F.4th 102 (2d Cir. 2021), and they remain agreements among competitors under 15 U.S.C. § 1. See Antitrust for Technology Companies: Monopolization, Platform Conduct, and the IP-Antitrust Interface.
• If you are the advertiser, keep competitors' marks out of headlines and display URLs, make comparisons truthful, add a no-trademark clause to affiliate agreements, and keep a way to message every affiliate at once (Lens.com). See the Trademark Fair Use Toolkit: Nominative Use Guidelines, Comparative Advertising Clearance, and Defense Briefing.

If you are the seller: responding to a takedown or demand letter

• Read the notice closely: who complained, which right (trademark, copyright, or patent), which listings, and which category.
• Do not relist, open a new account, or change listing identifiers to get around a removal. Circumvention violates platform terms and becomes willfulness evidence.
• Gather proof that the goods are genuine: invoices from authorized sources, the chain of supply, and photographs of codes and packaging.
• Ask whether your goods are materially different: made for another market, codes removed, expired, repackaged, or outside the warranty program. If so, stop selling them or disclose the difference. Note: removing serial numbers that controlled warranty eligibility made resold radar detectors materially different, supporting a preliminary injunction, in Beltronics, while reconditioned goods could be sold with adequate disclosure in Champion.
• Appeal through the platform's process with documents, and ask the complaining brand in writing to retract a mistaken notice.
• Describe genuine goods by plain brand name, without logos or any claim of authorization, and never use the brand as your storefront name. Source-identifying use of another's mark gets no special First Amendment screening, Jack Daniel's Properties, Inc. v. VIP Products LLC, 599 U.S. 140 (2023).
• Keep your INFORM identity and contact information accurate and current.
• For a demand letter, calendar the deadline, preserve purchase and sales records, do not destroy inventory without a written agreement, and respond with evidence. See the Responding to a Trademark Cease-and-Desist Letter Checklist.
• If named in a Schedule A case, appear promptly, test service, jurisdiction, and joinder, and move to limit any freeze to amounts tied to the accused products.
• If the complaint was knowingly false, evaluate a declaratory judgment of non-infringement (MedImmune) and tortious interference claims.

If you are the platform, host, landlord, or payment processor

• Publish a trademark complaint channel separate from the DMCA channel, staff it, and set response targets.
• Act on specific notices promptly and log each notice, decision, and time to action. A routine practice is admissible to show what was done on a particular occasion, Fed. R. Evid. 406.
• Adopt a repeat-infringer policy for trademark complaints and apply it. An unenforced policy is evidence against you, as the copyright safe-harbor loss in BMG Rights Management (US) LLC v. Cox Communications, Inc., 881 F.3d 293 (4th Cir. 2018) shows.
• Investigate red flags about particular sellers rather than waiting for a brand to spell them out (Omega; Y.Y.G.M.).
• Review any program in which you make, brand, package, or promote third-party goods; a platform that does those things may be a direct infringer, Ohio State University v. Redbubble, Inc., 989 F.3d 435 (6th Cir. 2021).
• Comply with INFORM: collect high-volume seller information within 10 days of qualification, verify it within 10 days, require annual certification, suspend sellers who do not comply after notice, disclose larger sellers' identities, and provide a reporting mechanism on listings. The FTC and state attorneys general enforce it.
• Answer contributory liability demands in writing after investigating the named sellers, and preserve the records.
• Keep a court-order protocol for identifying, freezing, and confirming accounts named in a TRO, and for answering subpoenas.
• Do not lead with Section 230 in a Lanham Act case; § 230(e)(2) excludes it.
• Landlords: add lease clauses prohibiting counterfeit sales and requiring cooperation, and act after any raid or letter (Coach; Luxottica). Payment processors: review high-risk merchants and act on specific notices (Frontline).
• For the full platform program, see the Platform Content Moderation Checklist and Running a Platform That Hosts User Content: A Practical Guide.

Red flags that should change your plan

• Dozens of storefronts sharing images, payees, or addresses: think Schedule A, not more notices.
• Prices below your own wholesale cost.
• Health or safety complaints in reviews.
• A platform reinstating documented sellers, or weeks of silence on notices.
• A newly registered mark being used to report your genuine listings. Consider a letter of protest under 37 C.F.R. § 2.149, expungement or reexamination under 15 U.S.C. §§ 1066a and 1066b, cancellation under 15 U.S.C. § 1064, and damages for a fraudulent registration under 15 U.S.C. § 1120. See Expungement, Reexamination, and Letters of Protest: The Trademark Modernization Act in Practice.
• Your own notices being rejected as inaccurate.
• A Schedule A defendant appearing with invoices for genuine goods.

Frequently asked questions

Do I need a federal registration? For counterfeiting remedies and most platform programs, yes. Section 1125(a) protects unregistered marks, but statutory damages, seizure orders, and most brand programs depend on registration.

Can I sue Amazon or eBay for counterfeits sold by third parties? Only under Inwood: inducement, or continued service with knowledge of specific infringers or willful blindness to them. A platform that removes reported listings promptly is rarely liable (Tiffany); one that ignores specific notices may be (Akanoc; Omega).

How many test purchases are enough? At least one counterfeit purchase shipped into the forum for each storefront you sue, plus enough to show the links among related sellers. More is better for networks and for safety claims.

Can I report gray market goods as counterfeit? No. They are genuine goods; report them, where the program allows, as trademark infringement based on material differences.

What happens if I send a mistaken notice? Retract it promptly. Repeated inaccurate notices cost reporting privileges and can support tortious interference claims, and a knowingly false DMCA notice carries § 512(f) liability.

Will the platform tell me who the seller is? Some programs share seller contact information, and INFORM disclosures appear on larger sellers' listings. Otherwise you need a subpoena, which means a lawsuit and usually an order permitting early discovery.

Is a competitor buying my brand as a keyword infringing? Rarely by itself. Claims succeed when the ad text uses the mark, the ad impersonates the brand, or real buyers were confused in meaningful numbers.

How long does a Schedule A case take to pay? A TRO usually issues within one to two weeks of filing, defaults follow in three to six months, and recoveries come from frozen balances, so they vary widely.

Practical takeaways

• Sort listings before you report them, and never call genuine goods counterfeit.
• Prove counterfeit status with a test purchase, a chain of custody, and an examiner.
• Send specific, listing-level notices and log every notice and every response.
• Escalate to intermediaries in writing; that letter builds or defeats contributory liability.
• Platforms: act on specific notices and red flags, and keep the records that prove it.
• Sellers: answer with documents, stop selling materially different goods, and never evade a removal.

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 every item in this checklist.
• Counterfeiting, Seizure Orders, and Schedule A Litigation: Fighting Fakes in Federal Court: counterfeiting remedies and multi-defendant practice.
• Brand Protection Online: A Strategic Guide for Businesses: building an enforcement program around business goals.
• Trademark Fair Use: Descriptive Use, Nominative Use, and Expressive Works After Jack Daniel's: the defenses resellers and advertisers raise.
• Unmasking Anonymous Online Speakers: John Doe Subpoenas, the Dendrite and Cahill Tests, and the First Amendment: the law of identifying anonymous defendants.

Related Guides

• Enforcing Trademarks Against Online Sellers and Platforms: A Practical Guide: the step-by-step narrative version of this checklist.
• Asserting or Defeating a Trademark Fair Use Defense: A Practical Guide: litigating nominative and descriptive use.
• Stopping Gray Market and Counterfeit Imports: A Practical Guide: Customs recordation and border enforcement.
• Identifying an Anonymous Defendant Online: A Practical Guide: early discovery and platform subpoenas.

Related Checklists

• Authenticating Website Evidence: A Practical Checklist: capture and foundation steps for listings and ads.
• Drafting a Trademark Cease-and-Desist Letter Checklist: structure and tone for demand letters.
• Preliminary Injunction and TRO Application Checklist: emergency relief papers.
• Anonymous Speaker Unmasking Checklist: the unmasking showing step by step.

Related Toolkits

• Online Trademark Enforcement Toolkit: Platform Notices, Test Purchase Records, and Contributory Liability Demands: the forms this checklist refers to.
• Online Brand Protection Toolkit: A Strategic Roadmap and Resource Library: program design and resources.
• Border Enforcement Toolkit: Recordations, Seizure Responses, and Gray Market Programs: Customs forms and responses.
• Platform Liability Toolkit: Terms of Service, Notice Procedures, and Litigation Defenses: the platform side's operating documents.
• Trademark Enforcement and Litigation Toolkit: From Watching to Verdict and Appeal: trademark litigation from watch notice to appeal.