Does the Amazon infringement notice identify a patent, trademark or copyright?
At the outset, you should carefully study the Amazon infringement notice to determine which IP rights are being asserted against your product listing. An accurate understanding of the asserted IP rights will lead to clues as to which features might be triggering the notice of infringement.
For example, if a utility patent is asserted, it would improper to allege infringement simply because your product looks like the competing products of the IP owner, especially if your product lacks key functional features.
How to respond to trademark infringement claims
Start with a preliminary review of the trademark registration using the Trademark Electronic Search System (TESS) at the USPTO site. Find out the answers to these questions:
- Is the registered mark for a word mark (in standard characters) or a design mark (logo)?
- What goods or services are covered by the registration?
- What is the date of first use in commerce? How does their first use date compare to yours?
- Any limitations in the registration (e.g., disclaimer of a portion of the mark, negative or exclusionary language in the identification of goods/services)?
An experienced trademark attorney can review the file history of the trademark application to see if the trademark owner made any distinguishing arguments about their mark that may help your case.
How to respond to patent infringement claims
Start by downloading a PDF copy of each asserted patent at Google patents. Determine if the asserted patent is a design or utility patent. A design patent always starts with the letter “D” in its patent number.
Design patent infringement
If a design patent is involved, focus on the patent drawings and compare the figures to the appearance of your product. The standard for determining design patent infringement is whether your product looks substantially similar to the patented design in the eyes of an ordinary observer. However, that analysis must be made in the context of prior art, meaning that the design patent owner cannot use their design patent to stop old designs.
Utility patent infringement
If a utility patent is involved, an experienced patent attorney can help you navigate through the landmines. You can try to make sense of the patent claims on your own, but you will likely need a claim comparison chart with an element-by-element table to see how your accused products compare to the claim language.
Each independent claim must be reviewed. All it takes is one independent claim to be infringed in order for the patent owner to prove infringement.
Next steps in defending against notice of infringement
Once you have formulated a strong position as to why your products do not infringe the alleged IP rights, you will want to have letters sent to the IP owner and Amazon with detailed explanations of why there is no infringement.
As a precautionary measure, you may also want to confer with your patent attorney about modifying your products to reduce the risk of further infringement notices. I generally prefer to err on the side of caution, so any product modifications that are not too costly are generally worth considering.
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