Trademark Cease and Desist - Hosting/Infrastructure Provider (New York)

TRADEMARK CEASE AND DESIST NOTICE TO HOSTING/INFRASTRUCTURE PROVIDER

NOTICE UNDER FEDERAL AND NEW YORK STATE LAW

SENT VIA: ☐ Certified Mail, Return Receipt Requested ☐ Email to Abuse/Legal Department ☐ Online Abuse Reporting Portal ☐ Hand Delivery

RE: NOTICE OF TRADEMARK INFRINGEMENT -- Federal and New York State Law Violations -- Demand for Immediate Takedown of Infringing Content Hosted at [________________________________]

Dear Abuse/Legal Team of [________________________________] ("Provider"):

This firm represents [________________________________] ("Trademark Owner" or "Our Client") in connection with the protection and enforcement of its valuable trademark rights under both federal law and the laws of the State of New York. We write to notify you that your hosting infrastructure is being used to facilitate trademark infringement that directly impacts Our Client's business and New York consumers, and to demand that you take immediate action.

New York occupies a uniquely important position in trademark enforcement law. The Second Circuit's decision in Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010), addresses online service-provider contributory trademark liability. New York also provides state-level trademark protections, including GBL § 360-l anti-dilution law and GBL § 349 consumer protection law.

This notice identifies specific alleged infringement for your evaluation. Under Inwood, contributory liability requires proof of intentional inducement or continued supply to a party the provider knows or has reason to know is infringing; receipt alone does not decide those elements.

PART I: LEGAL FRAMEWORK -- FEDERAL AND NEW YORK STATE LAW

A. Federal Trademark Law (Lanham Act)

1. Registered Mark Infringement -- 15 U.S.C. § 1114(1)

Any person who uses in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of goods or services likely to cause confusion, mistake, or deception shall be liable.

2. False Designation of Origin -- 15 U.S.C. § 1125(a)

Any person who uses in commerce any false designation of origin or misleading representation likely to cause confusion as to the affiliation, connection, or association of goods or services with another shall be liable.

3. Dilution -- 15 U.S.C. § 1125(c)

Subject to equitable principles, the owner of a famous mark that is inherently distinctive or has acquired distinctiveness may obtain an injunction against a person who, after the owner's mark became famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or tarnishment, regardless of actual or likely confusion, competition, or actual economic injury.

B. Contributory Trademark Infringement -- The Second Circuit's Tiffany Standard

The Second Circuit -- which governs New York -- decided the seminal case on contributory trademark liability for online service providers:

1. Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010)

The Second Circuit held that under the Inwood standard, contributory liability for online service providers requires "specific knowledge" of "particular" infringing listings or content, not merely "generalized knowledge" that some infringement may be occurring. Id. at 107. A notice and the provider's response are evidence to assess under that standard; the notice does not itself establish infringement, knowledge, or liability. The court stated:

"For contributory trademark infringement liability to lie, a service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods. Some contemporary knowledge of which particular listings are infringing or will infringe in the future is necessary."

Id. at 107.

2. Willful Blindness

Critically, the Second Circuit held that willful blindness -- where a provider has reason to suspect infringement and intentionally shields itself from discovering it -- is tantamount to actual knowledge. Id. at 109-110. The court stated:

"A service provider is not... permitted willful blindness. When it has reason to suspect that users of its service are infringing a protected mark, it may not shield itself from learning of the particular infringing transactions by looking the other way."

3. Gucci America, Inc. v. Hall & Associates, 135 F. Supp. 2d 409 (S.D.N.Y. 2001)

The Southern District of New York held that CDA § 230 does not immunize hosting providers from trademark infringement claims, consistent with § 230(e)(2)'s instruction that § 230 neither limits nor expands intellectual-property law.

CRITICAL -- SECOND CIRCUIT NOTICE: This letter identifies exact URL(s), the mark(s) at issue, and the alleged infringing use for evaluation. Under Tiffany, specificity and the provider's response may be relevant evidence, but the letter does not itself establish knowledge, willful blindness, or contributory liability.

C. New York General Business Law Article 24 -- Trademarks (§§ 360-360-r)

New York's trademark statute provides robust state-level protections:

1. Registration (§§ 360-360-b)

New York maintains a state trademark registration system administered by the Department of State. Under GBL § 360-d, its certificate is competent and sufficient evidence that the mark was registered. The certificate does not by itself establish statewide constructive notice, priority over earlier users, or an exclusive right against them.

2. Infringement (§ 360-k)

Any person who uses, without consent, any reproduction, counterfeit, copy, or colorable imitation of a mark registered under New York law in connection with the sale, distribution, offering for sale, or advertising of goods or services on or in connection with which such use is likely to cause confusion or mistake or to deceive, is liable for the remedies provided in § 360-m.

3. Remedies (§ 360-m)

Under GBL § 360-m(1), courts may grant injunctions and award profits or damages for wrongful use of a registered mark. The court may, in its discretion, award up to three times profits and damages and/or reasonable attorney's fees to the prevailing party where it finds knowing or bad-faith conduct or other circumstances supporting relief under the section. These state-law remedies require separate § 230 analysis when sought against a host for another person's content.

D. New York Anti-Dilution Law -- GBL § 360-l

New York provides a separate state dilution remedy under GBL § 360-l:

§ 360-l: Injury to Business Reputation; Dilution

"Likelihood of injury to business reputation or of dilution of the distinctive quality of a mark or trade name shall be a ground for injunctive relief in cases of infringement of a mark registered or not registered or in cases of unfair competition, notwithstanding the absence of competition between the parties or the absence of confusion as to the source of goods or services."

Key Features of GBL § 360-l:

• Applies to marks registered or not registered under New York law
• Does not require competition between the parties
• Does not require proof of likelihood of confusion
• Requires only a showing of likelihood of dilution (not actual dilution)
• New York law does not require federal-style fame, but the mark must be strong or truly distinctive, or have acquired secondary meaning. See Ivy League Sch., Inc. v. Danick Indus., Inc., 2014 NY Slip Op 51284(U).
• New York dilution claims also require substantial similarity between the marks. Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010). Evaluate both requirements before asserting a state dilution claim.

E. New York Consumer Protection -- GBL § 349 and § 350

1. GBL § 349 -- Deceptive Acts and Practices

Current § 349(a) declares unfair, deceptive, or abusive acts or practices in the conduct of business, trade, or commerce or furnishing a service in New York unlawful. Subsection (h)'s private action remains limited to injury from a deceptive act or deceptive practice. Before asserting that private route, confirm:

• The defendant's act or practice was consumer-oriented
• The act or practice was misleading in a material way
• The plaintiff suffered injury as a result

For a viable private claim, GBL § 349(h) provides remedies including:

• Actual damages or statutory damages of $50 (whichever is greater)
• Treble damages up to $1,000 in cases of willful or knowing violations
• Reasonable attorney's fees at the court's discretion
• Injunctive relief

2. GBL § 350 -- False Advertising

Section 350 prohibits false advertising in business, trade, commerce, or furnishing services in New York. Section 350-e supplies a private remedy for a person injured by a violation, including actual damages or $500, whichever is greater, and discretionary attorney's fees to a prevailing plaintiff.

3. Application to Trademark Infringement

Confusing use of a mark does not automatically establish a private GBL § 349 or § 350 claim. Identify materially misleading, consumer-oriented conduct and injury beyond a private dispute between competitors; a competitor may sue when the challenged practice is sufficiently consumer-oriented and directly injures it. See North State Autobahn, Inc. v. Progressive Ins. Group Co., 102 A.D.3d 5 (2d Dep't 2012).

F. CDA § 230 and DMCA -- Inapplicable

• CDA § 230(e)(2) preserves federal intellectual-property law; § 230 itself creates no federal-trademark shield. Gucci v. Hall, 135 F. Supp. 2d 409 (S.D.N.Y. 2001), addresses this in the hosting-provider context. Assess § 230 separately before asserting New York state-law claims against a provider for another person's content.
• DMCA § 512 safe harbor applies only to copyright. No trademark safe harbor exists.

PART II: TRADEMARK OWNERSHIP AND REGISTRATION DETAILS

Federal Registration(s)

New York State Registration (if applicable)

Additional Mark(s)

Goodwill and Market Presence in New York

• ☐ Our Client has operated in New York since [__/__/____]
• ☐ Our Client maintains ☐ physical locations ☐ online sales ☐ advertising directed at New York consumers
• ☐ Our Client is headquartered in New York
• ☐ The mark has been in continuous use for [____] years
• ☐ New York-specific advertising expenditures: approximately $[________________________________]
• ☐ New York-based revenue: approximately $[________________________________]
• ☐ The mark is widely recognized by New York consumers
• ☐ The mark has distinctive quality sufficient for GBL § 360-l protection

See Exhibit B (Trademark Registration Certificate(s)).

PART III: IDENTIFICATION OF INFRINGING CONTENT

A. Infringing Resource

B. Nature of Infringing Activity

• ☐ Use of mark in domain name
• ☐ Use of mark in website content, headers, or meta tags
• ☐ Sale of counterfeit goods bearing Our Client's mark
• ☐ Sale of competing goods/services under confusingly similar mark
• ☐ False impression of affiliation, sponsorship, or endorsement
• ☐ Phishing or fraud scheme targeting Our Client's New York customers
• ☐ Use of Our Client's logo, trade dress, or proprietary branding
• ☐ Cybersquatting or typosquatting
• ☐ Activity causing dilution of Our Client's mark (GBL § 360-l)
• ☐ Deceptive acts directed at New York consumers (GBL § 349)
• ☐ False advertising in New York (GBL § 350)
• ☐ Other: [________________________________]

C. New York-Specific Impact

• ☐ The infringing website targets New York consumers
• ☐ Products or services are sold to or delivered in New York
• ☐ New York consumers have been deceived or confused
• ☐ The infringer references New York locations, markets, or services
• ☐ Complaints from New York consumers have been received
• ☐ The infringing activity affects Our Client's New York business
• ☐ Our Client is headquartered in New York
• ☐ The hosting provider operates infrastructure or offices in New York
• ☐ The infringing activity constitutes a deceptive act or practice directed at New York consumers (§ 349)
• ☐ Other New York nexus: [________________________________]

D. Likelihood of Confusion -- Second Circuit Polaroid Factors

The Second Circuit applies the eight-factor Polaroid test: Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961):

1. Strength of the senior mark: ☐ Famous ☐ Strong ☐ Distinctive ☐ Suggestive
2. Similarity of the marks: ☐ Identical ☐ Substantially similar ☐ Confusingly similar
3. Proximity of the products/services: ☐ Direct competition ☐ Closely related ☐ Same market
4. Likelihood of bridging the gap: ☐ Probable ☐ Possible ☐ Unknown
5. Evidence of actual confusion: ☐ Documented ☐ Likely ☐ Not yet documented
6. Bad faith / Defendant's intent: ☐ Bad faith ☐ Willful ☐ Intentional ☐ Innocent
7. Quality of defendant's product/service: ☐ Inferior ☐ Comparable ☐ Unknown
8. Consumer sophistication: ☐ Low ☐ Moderate ☐ High

E. Evidence Summary

PART IV: HOSTING PROVIDER'S LEGAL EXPOSURE

A. Contributory Liability Under the Tiffany Standard

The Second Circuit's Tiffany decision establishes your obligations:

1. Before this notice: Generalized knowledge of potential infringement was insufficient to establish liability
2. After this notice: You have specific allegations and identifiers to evaluate
3. Your response: May be relevant evidence in the fact-specific knowledge inquiry
4. Liability: Is not established by receipt or inaction alone

B. Financial Exposure Summary

C. New York Dilution -- Lower Threshold Than Federal Law

GBL § 360-l has no federal-style fame requirement. The mark must still be strong and truly distinctive or have acquired secondary meaning, and the claimant must show likely dilution. A state dilution claim also requires substantial similarity between the marks.

D. Your Acceptable Use Policy

• ☐ Your AUP prohibits trademark infringement
• ☐ Your AUP prohibits unlawful activity
• ☐ Your TOS authorizes suspension/termination
• ☐ Abuse reporting mechanism: [________________________________]

PART V: DEMANDS AND REQUIRED ACTIONS

We demand the following within [____] business days:

A. Immediate Takedown

• ☐ Suspend or terminate the hosting account for [________________________________]
• ☐ Disable public access to the infringing resource
• ☐ Remove all content displaying Our Client's trademark(s)
• ☐ Prevent reactivation or migration of infringing content

B. Information Disclosure

• ☐ Account holder name and contact information
• ☐ Account creation date and registration details
• ☐ Payment and billing information
• ☐ Access and activity logs

C. Evidence Preservation

• ☐ Preserve all records related to the infringing account
• ☐ Implement litigation hold
• ☐ Do not destroy any relevant evidence

D. Written Confirmation

• ☐ Confirm all actions taken within [____] business days
• ☐ Direct responses to the undersigned

PART VI: DMCA SAFE HARBOR -- INAPPLICABILITY

This is a trademark notice. The DMCA safe harbor (17 U.S.C. § 512) does not apply to trademark claims. CDA § 230 creates no federal-trademark shield. Claims under New York law based on another person's content require separate § 230 analysis. See Gucci v. Hall, 135 F. Supp. 2d 409. The Second Circuit's Tiffany decision addresses contributory-trademark liability.

PART VII: LITIGATION WARNING

If your company fails to act, Our Client is prepared to:

1. File a federal lawsuit in the Southern District of New York (Manhattan -- the nation's premier IP litigation venue), Eastern District of New York (Brooklyn), Northern District of New York (Albany, Syracuse), or Western District of New York (Buffalo, Rochester)
2. If the facts support claims that survive any applicable § 230 defense, file a state court action in New York Supreme Court under GBL Art. 24, § 360-l, or §§ 349 and 350
3. Seek a TRO and/or preliminary injunction -- S.D.N.Y. routinely grants emergency trademark relief; the Part I motion practice is well established
4. Pursue monetary damages including profits, actual damages, treble damages, and statutory damages
5. Seek attorney's fees under GBL § 349(h) or § 350-e only if the private claim's requirements are met and the court awards them in its discretion
6. Refer the matter to the New York Attorney General, Consumer Frauds and Protection Bureau
7. Subpoena records through New York's broad third-party discovery mechanisms (CPLR Art. 31)

New York-Specific Court Considerations

The Southern District of New York is arguably the most important federal court for trademark law. It has generated an enormous body of precedent on online trademark infringement, contributory liability, and hosting provider obligations. Cases filed in S.D.N.Y. are closely watched by the IP bar.

The New York Supreme Court Commercial Division (available in certain counties, including New York, Kings, Queens, Nassau, Suffolk, and Westchester) is an ideal forum for complex state trademark and unfair competition claims.

Preservation of Rights

Our Client reserves all rights, including:

• ☐ Federal trademark infringement (15 U.S.C. § 1114)
• ☐ Federal unfair competition (15 U.S.C. § 1125(a))
• ☐ Federal dilution (15 U.S.C. § 1125(c))
• ☐ New York trademark infringement (GBL § 360-k)
• ☐ New York trademark dilution (GBL § 360-l)
• ☐ Deceptive acts and practices (GBL § 349)
• ☐ False advertising (GBL § 350)
• ☐ Common law trademark infringement and unfair competition
• ☐ Unjust enrichment
• ☐ Tortious interference with business relations

PART VIII: DOCUMENTATION AND EVIDENCE PRESERVATION CHECKLIST

Pre-Notice Preparation

• ☐ Obtained current WHOIS records
• ☐ Confirmed hosting provider via DNS/HTTP headers
• ☐ Captured timestamped screenshots
• ☐ Preserved HTML source of infringing pages
• ☐ Prepared side-by-side mark comparison (Polaroid factor analysis)
• ☐ Reviewed provider's AUP/TOS
• ☐ Gathered federal and New York registration certificates
• ☐ Documented New York consumer impact for GBL § 349/350
• ☐ Assessed whether mark qualifies for GBL § 360-l dilution protection
• ☐ Assessed UDRP/URS applicability
• ☐ Checked for New York offices or infrastructure of provider

Evidence Preservation

• ☐ Implemented litigation hold
• ☐ Set up automated monitoring
• ☐ Preserved chain of custody documentation
• ☐ Created certified copies of digital evidence
• ☐ Documented all provider communications
• ☐ Preserved proof of delivery

Post-Notice Follow-Up

• ☐ Calendared response deadline
• ☐ Monitored infringing resource
• ☐ Documented post-notice changes
• ☐ Prepared escalation strategy
• ☐ Assessed optimal filing venue (S.D.N.Y., E.D.N.Y., or NY Supreme Court Commercial Division)
• ☐ Considered NY AG referral (Consumer Frauds and Protection Bureau)
• ☐ Evaluated S.D.N.Y. TRO application procedures

PART IX: NEW YORK-SPECIFIC PRACTICE NOTES

A. The Second Circuit's Tiffany Standard -- Detailed Application

Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010), is the controlling precedent for hosting provider trademark liability in the Second Circuit. Key holdings:

1. Specific Knowledge Required

"For contributory trademark infringement liability to lie, a service provider must have more than a general knowledge or reason to know that its service is being used to sell counterfeit goods." Id. at 107. The service provider must have "some contemporary knowledge of which particular listings are infringing or will infringe in the future." Id.

2. Notice-and-Takedown Sufficient

The court's treatment of eBay's response shows that notice and response can be relevant evidence; it does not create automatic liability whenever a provider declines a requested takedown.

3. Willful Blindness = Actual Knowledge

"[A] service provider is not... permitted willful blindness. When it has reason to suspect that users of its service are infringing a protected mark, it may not shield itself from learning of the particular infringing transactions by looking the other way." Id. at 109-10.

4. Practical Implication for This Notice

This letter identifies the URL, marks, and alleged infringing use for your evaluation. Whether the provider had the required knowledge, and whether its response supports contributory liability, depends on the facts; sending this letter does not settle either question.

B. Polaroid Factors -- Second Circuit Likelihood of Confusion

The Second Circuit's eight-factor Polaroid test (Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961)) is the governing standard:

1. Strength of the senior mark -- market recognition and conceptual strength
2. Similarity of the marks -- visual, aural, and conceptual comparison
3. Proximity of the products -- competitive proximity in the marketplace
4. Likelihood of bridging the gap -- will the senior user enter the junior user's market?
5. Evidence of actual confusion -- most probative factor when present
6. Bad faith -- junior user's intent in adopting the mark
7. Quality of the junior user's product -- poor quality tarnishes the senior mark
8. Consumer sophistication -- less sophisticated consumers are more easily confused

For an online dispute, assess the challenged advertising and linked page in context under the same eight Polaroid factors. See 1-800 Contacts, Inc. v. JAND, Inc., No. 22-1634 (2d Cir. Oct. 8, 2024).

C. GBL § 360-l Anti-Dilution -- Strategic Advantage

New York's anti-dilution statute is broader than federal dilution law in several important respects:

GBL § 360-l does not require national fame, but a claimant still needs a strong or truly distinctive mark and substantial similarity. The Tiffany court discussed New York dilution law and the similarity requirement.

D. GBL § 349/350 -- Consumer Protection as Trademark Tool

GBL § 349(h) and § 350-e permit discretionary attorney's fees to prevailing private plaintiffs whose claims meet the statutes' requirements:

• § 349: Requires consumer-oriented, materially misleading conduct and resulting injury. The court may award fees to a prevailing plaintiff and may increase damages up to $1,000 for a willful or knowing violation.
• § 350: Covers materially misleading advertising. Section 350-e provides a $500 minimum recovery for an injured private plaintiff, discretionary fees, and a conditional increase up to $10,000.
• Both provisions support class actions, creating additional leverage.

E. New York Long-Arm Jurisdiction

New York's long-arm statute (CPLR § 302) provides jurisdiction over out-of-state defendants who:

• § 302(a)(1): Transact business within New York
• § 302(a)(2): Commit a tortious act within New York
• § 302(a)(3): Commit a tortious act outside New York causing injury within New York (if the person regularly does business in NY, or derives substantial revenue from NY, or expects or should reasonably expect the act to have consequences in NY and derives substantial revenue from interstate commerce)

For online service providers, the "transacts business" prong is often the most relevant. Hosting services that are available to and used by New York consumers may satisfy this requirement. See Chloe v. Queen Bee of Beverly Hills, LLC, 616 F.3d 158 (2d Cir. 2010).

F. Practical Considerations for New York Practitioners

• S.D.N.Y. is the gold standard for trademark litigation. Its judges have deep IP expertise, and its opinions are nationally influential. Consider S.D.N.Y. for maximum precedential impact.
• NY Supreme Court Commercial Division provides specialized handling for complex business disputes, including trademark and unfair competition. Available in Manhattan (New York County), Brooklyn (Kings County), and other counties.
• GBL § 349/350 claims may provide attorney fees only under their exact discretionary text and only when the claim's predicates are met; neither statute makes a fee award mandatory merely because a plaintiff prevails.
• GBL § 360-l permits injunctive relief without federal-style fame, but assess the mark's strength and substantial similarity before asserting dilution.
• NY AG Consumer Frauds Bureau actively investigates online deceptive practices; referrals can create additional pressure on non-responsive hosting providers.

GOOD FAITH STATEMENT

The undersigned states under good faith:

1. I am authorized to act on behalf of [________________________________], the trademark owner.
2. I have a good-faith belief that the use described herein is unauthorized.
3. The information in this notice is accurate to the best of my knowledge.
4. This notice protects legitimate trademark rights under federal and New York law.

ATTACHMENTS AND EXHIBITS

SIGNATURE BLOCK

Very truly yours,

____________________________________________
Signature

Name:     [________________________________]
Title:    [________________________________]
Firm:     [________________________________]
Address:  [________________________________]
          [________________________________]
Phone:    [________________________________]
Email:    [________________________________]
NY Reg.:  [________________________________]
Date:     [__/__/____]

On behalf of:

[________________________________]
(Trademark Owner)

SOURCES AND REFERENCES

• Lanham Act, 15 U.S.C. § 1051 et seq.
• 15 U.S.C. §§ 1114, 1125(a), 1125(c), 1116-1118
• N.Y. Gen. Bus. Law Art. 24, §§ 360-360-r (New York Trademark Act)
• N.Y. Gen. Bus. Law § 360-k (Infringement)
• N.Y. Gen. Bus. Law § 360-l (Anti-Dilution)
• N.Y. Gen. Bus. Law § 360-m (Remedies)
• N.Y. Gen. Bus. Law § 349 (Deceptive Acts and Practices)
• N.Y. Gen. Bus. Law § 350 (False Advertising)
• N.Y. CPLR § 302 (Long-Arm Statute)
• N.Y. CPLR Art. 31 (Disclosure/Discovery)
• 47 U.S.C. § 230(e)(2) (effect on intellectual-property law)
• 17 U.S.C. § 512 (DMCA Safe Harbor -- Copyright Only)
• Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010)
• Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844 (1982)
• Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961)
• Gucci America, Inc. v. Hall & Associates, 135 F. Supp. 2d 409 (S.D.N.Y. 2001)
• Deere & Co. v. MTD Products, Inc., 41 F.3d 39 (2d Cir. 1994)
• 1-800 Contacts, Inc. v. JAND, Inc., No. 22-1634 (2d Cir. Oct. 8, 2024)
• Chloe v. Queen Bee of Beverly Hills, LLC, 616 F.3d 158 (2d Cir. 2010)