Trademark Cease and Desist - Online Marketplace (New York)

TRADEMARK CEASE AND DESIST LETTER — ONLINE MARKETPLACE INFRINGEMENT

STATE OF NEW YORK — FEDERAL AND STATE LAW

VIA CERTIFIED MAIL, RETURN RECEIPT REQUESTED
AND VIA EMAIL TO: [________________________________]

Date: [__/__/____]

PRIVILEGED AND CONFIDENTIAL

TO:

FROM:

RE: DEMAND TO CEASE AND DESIST — Unauthorized Use of the [________________________________] Trademark(s) on [________________________________] Online Marketplace — Violations of Federal Lanham Act, New York General Business Law, and New York Penal Law

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

A. Federal Trademark Protection — The Lanham Act

This firm represents [________________________________] ("Our Client" or "Trademark Owner") in connection with the protection and enforcement of its trademark rights under both federal and New York state law. This letter constitutes formal notice and demand that you immediately cease and desist from all unauthorized use of Our Client's trademark(s) on the [________________________________] online marketplace.

The Lanham Act, 15 U.S.C. § 1051 et seq., provides the primary federal framework:

• 15 U.S.C. § 1114(1): Prohibits use of any reproduction, counterfeit, copy, or colorable imitation of a registered mark where such use is likely to cause confusion
• 15 U.S.C. § 1125(a): Prohibits false designation of origin and misleading descriptions in commerce
• 15 U.S.C. § 1125(c): Protects famous marks against dilution
• 15 U.S.C. § 1117(a): Recovery of profits, damages (up to treble), costs, and attorneys' fees in exceptional cases
• 15 U.S.C. § 1117(c): Statutory damages: $1,000-$200,000 per counterfeit mark per type of goods ($2,000,000 for willful)

B. New York Trademark Act — N.Y. Gen. Bus. Law Art. 24 (§§ 360 to 360-n)

New York's trademark statute, codified in Article 24 of the General Business Law, provides comprehensive state-level protection:

• N.Y. Gen. Bus. Law § 360 — Definitions: Defines "trademark," "service mark," "mark," "applicant," and "registrant"
• N.Y. Gen. Bus. Law § 360-a — Registration: Provides for registration of trademarks with the New York Secretary of State
• N.Y. Gen. Bus. Law § 360-c — Duration: Registrations are effective for ten years with renewal
• N.Y. Gen. Bus. Law § 360-k — Infringement: Any person who uses any reproduction, counterfeit, copy, or colorable imitation of a mark registered under New York law in connection with the sale, distribution, or advertising of goods or services where such use is likely to cause confusion commits trademark infringement. The owner of a mark registered under Article 24 may seek:
• Injunctive relief according to principles of equity
• Recovery of profits from the infringement
• Damages
• Destruction of infringing articles
• Reasonable attorneys' fees in the court's discretion
• N.Y. Gen. Bus. Law § 360-l — Dilution: The owner of a mark with distinctive quality may obtain an injunction against another person's commercial use that causes dilution of the distinctive quality of the mark, regardless of the presence or absence of:
• Competition between the parties
• Likelihood of confusion, mistake, or deception
  This provides broader protection than the federal dilution statute for marks that are distinctive in New York.

C. New York Consumer Protection — N.Y. Gen. Bus. Law §§ 349 and 350

New York's consumer protection statutes provide significant additional enforcement tools:

• N.Y. Gen. Bus. Law § 349 — Deceptive Acts and Practices:
• Prohibits deceptive acts or practices in the conduct of any business, trade, or commerce
• Provides a private right of action for any person who has been injured by a deceptive act or practice
• Damages: Actual damages or $50, whichever is greater
• Treble damages up to $1,000 for willful or knowing violations
• Reasonable attorneys' fees
• No proof of reliance required — plaintiff need only show the act or practice was deceptive and caused injury (consumer-oriented standard)

• The statute is broadly construed to cover trademark infringement that deceives consumers

• N.Y. Gen. Bus. Law § 350 — False Advertising:

• Prohibits false advertising in the conduct of any business, trade, or commerce
• Applies to marketplace listings that use Our Client's mark to deceive consumers about the source or quality of goods
• Same remedies as § 349, including treble damages for willful violations

D. New York Penal Law — Criminal Trademark Counterfeiting (Art. 165)

New York has among the most robust criminal trademark counterfeiting statutes in the nation, with three graduated degrees of offense:

• N.Y. Penal Law § 165.70 — Definitions:
• "Trademark" includes any word, name, symbol, or device adopted and used by a person to identify goods made or sold by such person and to distinguish them from goods made or sold by others

• "Counterfeit trademark" means a spurious trademark that is identical with or substantially indistinguishable from, a genuine trademark

• N.Y. Penal Law § 165.71 — Trademark Counterfeiting in the Third Degree:

• A person commits this offense when, with intent to deceive or defraud, the person manufactures, distributes, sells, or offers for sale goods bearing a counterfeit trademark, or possesses a trademark knowing it to be counterfeit for the purpose of affixing it to goods

• Class A Misdemeanor: Up to 1 year imprisonment

• N.Y. Penal Law § 165.72 — Trademark Counterfeiting in the Second Degree:

• When the offense involves goods with an aggregate retail value exceeding $1,000

• Class E Felony: Up to 4 years imprisonment

• N.Y. Penal Law § 165.73 — Trademark Counterfeiting in the First Degree:

• When the offense involves goods with an aggregate retail value exceeding $100,000
• Class C Felony: Up to 15 years imprisonment

E. Second Circuit Precedent — Marketplace Contributory Liability

The Second Circuit decided the landmark case Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010), which established the controlling standard for online marketplace contributory trademark infringement:

• General knowledge insufficient: A marketplace's general knowledge that some sellers may sell infringing goods is not enough for contributory liability
• Specific knowledge required: The marketplace must have specific, contemporary knowledge of particular infringing listings and continue to allow the infringement
• Duty upon notice: Once the marketplace has specific knowledge (e.g., through this cease and desist letter or a formal IP complaint), failure to act may establish contributory liability
• No affirmative duty to monitor: The court held that eBay had no general duty to proactively monitor for counterfeits, but must act on specific knowledge
• Willful blindness: A marketplace that deliberately shields itself from learning about specific infringement may be found willfully blind and subject to liability

This letter, when copied to the marketplace platform, establishes the requisite specific knowledge for potential contributory liability.

F. First Sale Doctrine

The first sale doctrine permits resale of genuine goods, as recognized in Kirtsaeng v. John Wiley & Sons, Inc., 568 U.S. 519 (2013). However, the Second Circuit has held that the defense fails where goods are materially different from authorized goods. See El Greco Leather Prods. Co. v. Shoe World, Inc., 806 F.2d 392 (2d Cir. 1986); Original Appalachian Artworks, Inc. v. Granada Elecs., Inc., 816 F.2d 68 (2d Cir. 1987).

PART II: TRADEMARK OWNERSHIP AND REGISTRATION DETAILS

Federal Registration(s)

Additional Federal Registration(s) (if applicable)

New York State Registration (if applicable)

Mark Type and Strength

☐ Word Mark ☐ Design Mark (Logo) ☐ Composite Mark ☐ Trade Dress

Our Client's mark is:
☐ Arbitrary or fanciful ☐ Suggestive ☐ Descriptive with secondary meaning ☐ Famous mark (dilution protection)

Our Client has continuously used the [________________________________] mark in interstate and New York intrastate commerce since [__/__/____], including substantial sales to New York consumers. Our Client maintains [________________________________] in New York and has invested approximately $[________________________________] in marketing and brand development, including advertising in the New York metropolitan area.

PART III: IDENTIFICATION OF INFRINGING LISTINGS

Infringing Listing Detail Table

Nature of Infringement

☐ Identical reproduction of the registered mark on goods
☐ Confusingly similar mark or misspelling variation
☐ Use of mark in product title, description, or listing keywords
☐ Unauthorized use of logo or design mark in product images
☐ Use of trade dress (packaging, configuration, look and feel)
☐ False claims of authorized dealer or official seller status
☐ Sale of counterfeit goods bearing the mark
☐ Sale of materially different gray market goods
☐ Use of mark in backend search terms, meta tags, or sponsored ads
☐ Initial interest confusion through trademark keyword bidding
☐ Other: [________________________________]

New York Consumer Impact

New York is one of the largest consumer markets in the United States and a global center of commerce:

☐ Infringing goods shipped to New York addresses
☐ New York consumers have purchased infringing goods
☐ Complaints received from New York consumers
☐ The infringing listings compete with authorized New York retail distribution
☐ The seller operates from New York
☐ Counterfeit goods are physically present in New York (warehoused, fulfilled from NY)
☐ Estimated aggregate retail value of counterfeit goods sold to NY consumers: $[________________________________]

PART IV: LEGAL VIOLATIONS — FEDERAL AND NEW YORK STATE CLAIMS

A. Federal Claims Under the Lanham Act

1. Trademark Infringement — 15 U.S.C. § 1114(1)
Your unauthorized use of the [________________________________] mark constitutes infringement. The Second Circuit applies the Polaroid factors for likelihood of confusion (Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961)):

☐ Strength of the senior mark
☐ Degree of similarity between the marks
☐ Proximity of the products
☐ Likelihood that the senior user will bridge the gap
☐ Actual confusion
☐ Junior user's good faith in adopting the mark
☐ Quality of the junior user's product
☐ Sophistication of the buyers

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

3. Trademark Dilution — 15 U.S.C. § 1125(c) (if applicable)
☐ Our Client's mark is famous, and your use dilutes it by ☐ blurring ☐ tarnishment.

4. Counterfeiting — 15 U.S.C. § 1117(c) / 18 U.S.C. § 2320 (if applicable)
☐ The goods are counterfeit, entitling Our Client to statutory damages.

B. New York State Claims

5. New York Trademark Infringement — N.Y. Gen. Bus. Law § 360-k
Your use of a reproduction, counterfeit, copy, or colorable imitation of Our Client's mark constitutes infringement under Article 24 of the General Business Law. Remedies include injunctive relief, profits, damages, destruction of infringing articles, and attorneys' fees.

6. New York Trademark Dilution — N.Y. Gen. Bus. Law § 360-l
☐ Our Client's mark possesses distinctive quality in New York, and your commercial use causes dilution, regardless of:

• Competition between the parties
• Likelihood of confusion

Note: New York's state dilution statute (§ 360-l) does not require the mark to be "famous" (unlike the federal dilution standard under 15 U.S.C. § 1125(c)). It requires only that the mark possess "distinctive quality." This provides broader protection under New York law than under the Lanham Act.

7. Deceptive Acts and Practices — N.Y. Gen. Bus. Law § 349
Your activities constitute deceptive acts and practices in trade or commerce, including:

• Deceiving consumers as to the source, sponsorship, or approval of your goods
• Causing consumer confusion regarding affiliation with Our Client
• Selling counterfeit or unauthorized goods as genuine
• Misrepresenting product quality, origin, or characteristics

Section 349 Remedies:

• Actual damages or $50 (whichever is greater)
• Treble damages up to $1,000 for willful or knowing violations
• Reasonable attorneys' fees
• Injunctive relief

8. False Advertising — N.Y. Gen. Bus. Law § 350
Your marketplace listings constitute false advertising, as they misrepresent the source, origin, and characteristics of your goods. Same remedies as § 349.

9. Criminal Trademark Counterfeiting — N.Y. Penal Law §§ 165.71-165.73 (if applicable)

☐ The sale of counterfeit goods may constitute criminal trademark counterfeiting:

New York's criminal counterfeiting statutes are among the most severe in the nation. The $100,000 threshold for First Degree counterfeiting (Class C felony, up to 15 years) is particularly significant for high-volume online marketplace sellers.

PART V: MARKETPLACE-SPECIFIC REPORTING PROCEDURES

A. Amazon Brand Registry

B. eBay VeRO Program

New York Note: The Tiffany v. eBay case originated in the S.D.N.Y. eBay's VeRO program was developed in significant part in response to this litigation. New York courts have the most developed body of case law on marketplace contributory liability.

C. Other Marketplace Platforms

New York Practice Tip: New York City is a major hub for counterfeit goods enforcement. The NYPD has a dedicated Trademark Counterfeiting Task Force. The Manhattan District Attorney's Office has pursued significant counterfeiting prosecutions. For cases involving physical inventory of counterfeit goods in New York, consider coordination with local law enforcement in parallel with marketplace enforcement.

PART VI: DEMANDS

A. Immediate Actions (Within 24 Hours)

1. Remove all infringing listings from the [________________________________] marketplace and all other online platforms.
2. Cease all use of the [________________________________] mark or any confusingly similar mark.
3. Remove all infringing content including images, descriptions, keywords, meta tags, and sponsored advertising.

B. Written Compliance (Within [____] Calendar Days)

4. Written confirmation of full compliance sent to undersigned counsel.
5. Full accounting including:
   - Total units sold and gross revenue (including New York sales)
   - Current inventory count and locations (including any New York warehouses)
   - Supplier names, addresses, and contact information
   - All marketplace accounts operated
   - Sales records for shipments to New York addresses
   - Aggregate retail value of all goods sold bearing Our Client's mark (for criminal counterfeiting assessment)
6. Surrender or destroy all infringing inventory with documented proof.

C. Ongoing Obligations

7. Permanent cessation of all use of Our Client's mark.
8. Preserve all records relating to purchase, sale, and distribution of infringing goods.

D. Compliance Deadline

All demands must be satisfied no later than [__/__/____].

PART VII: LITIGATION WARNING AND REMEDIES

A. Federal Court — New York Districts

If you fail to comply, Our Client is prepared to file suit in the United States District Court for the ☐ Southern District of New York (Manhattan, White Plains) ☐ Eastern District of New York (Brooklyn, Central Islip) ☐ Northern District of New York (Albany, Syracuse, Binghamton, Utica) ☐ Western District of New York (Buffalo, Rochester), seeking:

• Temporary restraining order and preliminary injunction under 15 U.S.C. § 1116
• Permanent injunction
• Defendant's profits under 15 U.S.C. § 1117(a)
• Actual damages (up to treble) under 15 U.S.C. § 1117(a)
• Statutory damages of $1,000 to $2,000,000 per counterfeit mark per type of goods under 15 U.S.C. § 1117(c)
• Attorneys' fees in exceptional cases
• Destruction of infringing articles under 15 U.S.C. § 1118
• Ex parte seizure under 15 U.S.C. § 1116(d) (the S.D.N.Y. has extensive experience with ex parte seizure orders in counterfeiting cases)

Note: The Southern District of New York is one of the most experienced and respected trademark courts in the nation. The S.D.N.Y. handles a substantial volume of online marketplace IP disputes and has developed extensive precedent in this area.

B. New York State Court — Supreme Court

Our Client may also pursue claims in New York Supreme Court (the trial court of general jurisdiction) seeking:

• Injunctive relief under N.Y. Gen. Bus. Law § 360-k
• Profits and damages under N.Y. Gen. Bus. Law § 360-k
• Dilution injunction under N.Y. Gen. Bus. Law § 360-l
• Treble damages under N.Y. Gen. Bus. Law § 349 (up to $1,000 for willful violations)
• Attorneys' fees under N.Y. Gen. Bus. Law §§ 349, 350
• Destruction of infringing articles

C. Criminal Referral — New York Penal Law

☐ If counterfeit goods are involved, Our Client may refer this matter to:

• Manhattan District Attorney's Office — maintains dedicated IP/counterfeiting unit
• Brooklyn District Attorney's Office
• Queens District Attorney's Office
• New York State Attorney General — Bureau of Internet and Technology
• NYPD Trademark Counterfeiting Task Force
• U.S. Attorney for the S.D.N.Y. or E.D.N.Y.
• U.S. Customs and Border Protection (JFK Airport, Newark/Elizabeth ports, Port of New York)
• Homeland Security Investigations (HSI) — New York Field Office

Criminal Penalties Summary:

PART VIII: EVIDENCE PRESERVATION CHECKLIST

Attorney Preparation Checklist:

☐ Verified USPTO TSDR records
☐ New York Secretary of State trademark records
☐ Screenshots of all infringing listings with timestamps
☐ Test purchase(s) shipped to New York address with order confirmations
☐ Photographs comparing authentic vs. test-purchased goods
☐ Chain of custody documentation
☐ Evidence of New York consumer sales/impact
☐ Marketing expenditure records (New York-specific)
☐ Evidence of actual confusion from New York consumers
☐ Prior enforcement records
☐ Marketplace platform correspondence
☐ Calculation of aggregate retail value (for criminal counterfeiting assessment)
☐ Evidence of physical counterfeit inventory in New York (if known)

Litigation Hold:

☐ Issue litigation hold notice to client
☐ Preserve electronic evidence including metadata
☐ Save marketplace platform communications
☐ Document marketplace IP report filings

PART IX: NEW YORK-SPECIFIC PRACTICE NOTES

A. Second Circuit Likelihood of Confusion — Polaroid Factors

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

1. Strength of the senior mark: The stronger the mark, the broader the protection
2. Degree of similarity: Visual, phonetic, and conceptual comparison
3. Proximity of the products: How closely related are the goods
4. Likelihood of bridging the gap: Whether the senior user is likely to enter the junior user's market
5. Actual confusion: Direct evidence of consumer confusion
6. Junior user's good faith: Whether the defendant intended to deceive
7. Quality of the junior user's product: If poor quality, greater risk of harm to the mark
8. Sophistication of the buyers: Less sophisticated buyers are more likely to be confused

For online marketplace cases, the Second Circuit has addressed initial interest confusion, post-sale confusion, and the role of search engine and keyword advertising in creating confusion.

B. Tiffany v. eBay — Controlling Precedent

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

• Generalized awareness of counterfeiting is insufficient for contributory liability
• The marketplace must have contemporary, specific knowledge of particular infringing items
• The marketplace's duty arises only upon receiving such specific knowledge
• The burden of policing for counterfeits falls on the trademark owner, not the marketplace
• A marketplace that promptly removes infringing listings upon notice is not contributorily liable
• Willful blindness (deliberately avoiding specific knowledge) may substitute for actual knowledge

Strategic Implication: This cease and desist letter, when sent to the marketplace platform, establishes the specific knowledge required under Tiffany. If the platform fails to act after receiving this notice, contributory liability may attach.

C. New York Dilution — Lower Threshold Than Federal

New York's dilution statute (GBL § 360-l) provides broader protection than the federal Lanham Act:

Practice Tip: For marks that are well-known in New York but may not meet the "famous" threshold for federal dilution, the New York state dilution claim under § 360-l provides an important additional remedy.

D. GBL § 349 — Consumer-Oriented Conduct Standard

The New York Court of Appeals has established a three-part test for § 349 claims:

1. The challenged act or practice must be consumer-oriented
2. The act or practice must be misleading in a material respect
3. The plaintiff must suffer injury as a result

Online marketplace trademark infringement readily satisfies these elements because:

• Marketplace listings are directed at the consuming public (consumer-oriented)
• Use of another's trademark in connection with unauthorized goods is inherently misleading
• The trademark owner suffers injury through lost sales, goodwill damage, and loss of quality control

Practice Tip: Unlike common law fraud, § 349 does not require proof of intent to deceive or justifiable reliance. This lower standard makes § 349 a valuable complement to Lanham Act claims.

E. New York City — Physical Counterfeiting Hub

New York City, particularly Manhattan's Chinatown and other areas, has historically been a center for physical counterfeit goods distribution. For online marketplace sellers based in or shipping from New York:

• The NYPD Trademark Counterfeiting Task Force may conduct raids and seizures
• The Manhattan DA's IP Unit actively prosecutes counterfeiting cases
• JFK International Airport and the Port of New York/New Jersey are major entry points for counterfeit imports
• ICE/HSI New York Field Office coordinates federal counterfeiting investigations

F. New York Attorney General Referral

For systematic counterfeiting affecting New York consumers:

New York State Attorney General
Bureau of Internet and Technology
28 Liberty Street
New York, NY 10005

The AG has brought enforcement actions against online sellers of counterfeit goods and has authority under GBL § 349 and Executive Law § 63(12) to seek injunctive relief, restitution, and civil penalties.

SIGNATURE AND DELIVERY

This letter is written without prejudice to any and all rights and remedies available to Our Client under federal and New York state law, all of which are expressly reserved.

Respectfully but firmly,

[________________________________]
Attorney for [________________________________]

___________________________________________
Signature

[________________________________]
Name (Printed)

New York Bar Registration No.: [________________________________]

[________________________________]
Firm Name

[________________________________]
Address

[________________________________]
Telephone / Email

Date: [__/__/____]

ENCLOSURES AND EXHIBITS

☐ Exhibit A: Screenshots of Infringing Listings
☐ Exhibit B: Federal Trademark Registration Certificate(s)
☐ Exhibit C: New York State Trademark Registration (if applicable)
☐ Exhibit D: TSDR Printout(s)
☐ Exhibit E: Comparison of Authentic vs. Infringing Goods
☐ Exhibit F: Test Purchase Documentation (New York delivery)
☐ Exhibit G: Evidence of New York Consumer Sales/Impact
☐ Exhibit H: Marketplace Seller Profile Screenshots
☐ Exhibit I: Aggregate Retail Value Calculation (for criminal assessment)

CERTIFICATE OF SERVICE

SOURCES AND REFERENCES

• Lanham Act, 15 U.S.C. §§ 1051-1141n
• New York General Business Law Art. 24, §§ 360-360-n
• N.Y. Gen. Bus. Law §§ 349, 350
• N.Y. Penal Law §§ 165.70-165.73
• Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010)
• Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961)
• El Greco Leather Prods. v. Shoe World, 806 F.2d 392 (2d Cir. 1986)
• Original Appalachian Artworks v. Granada Elecs., 816 F.2d 68 (2d Cir. 1987)
• Inwood Laboratories v. Ives Laboratories, 456 U.S. 844 (1982)
• Kirtsaeng v. John Wiley & Sons, 568 U.S. 519 (2013)
• New York Secretary of State: https://www.dos.ny.gov
• New York Attorney General: https://ag.ny.gov
• Amazon Brand Registry: https://brandregistry.amazon.com
• eBay VeRO Program: https://www.ebay.com/help/policies/listing-policies/selling-policies/intellectual-property-vero-program