Internet and internet-related scams are constantly evolving. Increasingly, online marketplaces are filled with counterfeit products that may infringe on your patent, or your trademark may be used to attempt to bring legitimacy to a fake social media account or in a fraudulent email.

Online takedown requests are a common intellectual property enforcement mechanism. My colleague, Cory Verba, recently discussed online takedown procedures under the Digital Millennium Copyright Act (DMCA). While the DMCA provides a great mechanism to enforce intellectual property, the Act only applies to copyrighted material.

This begs the question—how do you protect your other IP, like patents and trademarks, from online infringement?

Thankfully, many online service providers state they are committed to protecting third-party IP rights in their terms of service and have adopted DMCA-style notice-and-takedown procedures for patents and trademarks. Some options are briefly discussed below.

Trademarks

Many online service providers have a separate online takedown form for trademark infringement that is akin to a DMCA takedown form. Generally, a provider requires a demonstration of ownership rights in a registered trademark, such as by providing a copy of or link to a trademark registration certificate, before it will remove the infringing material.

As an example, many social media platforms (e.g. Meta, Instagram, X) will remove posts, pictures, or accounts that include use of your trademark in a confusing or misleading manner. Similarly, an email provider (e.g. Gmail, Yahoo) may shut down an email account that is sending fraudulent emails using your trademark, like emails offering fake brand influencer or sponsorship agreements.

Some online service providers go even further. If your brand qualifies, registration of your brand and registered trademarks to Amazon’s Brand Registry can provide additional benefits that make protecting your IP rights simpler. For instance, registered brands gain the benefit of automated detection tools and specialized searching and reporting tools on Amazon. Importantly, you do not need to sell on Amazon to become a Registered Brand.

Patents

Some online service providers also provide tools for combatting counterfeit and infringing products being sold on online marketplaces.

As an example, you can submit a takedown request for a product listing that infringes a utility or design patent. Further, as a Registered Brand on Amazon, you have access to the Amazon Patent Evaluation Express (APEX) program, which is a quicker and cheaper alternative to patent litigation similar to an arbitration. Briefly, a U.S. patent rights owner can submit, along with a $4,000 fee, a complaint that a product(s) is infringing. The alleged infringer can respond to the complaint along with another $4,000 fee. A neutral patent evaluator will review the allegedly infringing product and arguments of both parties to determine if the product likely infringes a single patent claim of a utility patent. If the evaluator finds infringement is likely, Amazon will remove the product listing. At the end of the APEX process, the successful party is refunded their fee. Furthermore, upon a successful APEX decision, the registered brand owner can refer to their winning case to expediently take down other similar infringing product listings.

It is important to understand your options for protecting and enforcing your intellectual property rights. From online takedown procedures like the above to administrative proceedings like ITC 337 Investigations that can block the import of counterfeit goods to UDRP proceedings and infringement lawsuits, we are ready to help guide you through your IP enforcement decisions.

If you have any questions, do not hesitate to reach out to us.