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BizIPEsq.
BizIPEsq., Attorney
Category: Intellectual Property Law
Satisfied Customers: 996
Experience:  I am a tech attorney and I represent clients with technology, internet and intellectual property matters
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Hello, We are an online seller of replacement trampoline

Resolved Question:

Hello,

We are an online seller of replacement trampoline parts.

We are an importer of the parts we sell, and we privately brand them under our own brand "Power Trampoline".

We regularly sell our parts through Amazon's Seller Central Merchant program, which allows businesses to post products and have them sold on Amazon.com.

A differentiating strategy of Amazon's marketplace, in comparison to other marketplaces, is that sellers can sell under another seller's listing if they have the same product. The purpose of Amazon's listing model is to condense the number of listings for multiple products on the marketplace, something which is considered a problem on other marketplaces such as eBay. As a result there is less clutter for identical items on Amazon and more price competition between sellers of a product, as each seller sets a price, and shoppers are able to view all available buying options and select who they purchase from.

As we are in the replacement trampoline parts business, which is a very niche business to say the least, all of our products and competitors products are essentially identical and are designed based around fitting specific brands and models of trampolines. However, packaging of the products (the cardboard boxes they are shipped in) do bare different distinctive logos and brand names. Please note that these logos and brand names are XXXXX XXXXX the actual products themselves, only on the boxes they are shipped in, and the instruction manuals that come with the products.

We have a competitor named “Upper Bounce”, who has a registered trademark registration number 85315406 with the USPTO. Their trademark relates to their actual logo design.

Being that our particular products are essentially identical to their products, although as stated above, different packaging, and that customers purchase the products based on compatibility to fit their original trampolines, and price, but not on a particular “brand name” of a seller or brand name of the replacement part itself, we previously had listed our similar products on Upper Bounce’s Amazon listings.

Their Amazon listing had the title similar to “Upper Bounce 12 Foot Trampoline Jumping Mat Fits 14 Foot Trampoline Frames with 84 Springs”. They had no reference to Upper Bounce as a brand, only the words “Upper Bounce” in the title. They have an image of the product, with a computer generated “Upper Bounce” logo, the same as their trademark, inserted into a gift tag kind of image hanging on the product. That is the only use of their trademark within their listing.

Here is one of their listings to show an example:

http://www.amazon.com/Upper-Bounce-Trampoline-Enclosure-Separately/dp/B003OSRIW8/ref=sr_1_1?ie=UTF8&qid=1371149810&sr=8-1&keywords=upper+bounce+mat

Our products have the same specifications, designed to fit the same kinds of trampolines, are essentially identical except for the packaging, and they have no reference or images of the packaging within the product listing itself or shown or advertised to the potential customers who are viewing the page.

Based on the assumption we are selling products through these listings which is providing competition to them, we recently received a cease and desist letter from their attorney, referencing our activities and stating we are violating trademark law due to the use of their trademark.

We have removed ourselves from the “Upper Bounce” listings of Amazon which we were previously on once we received the letter.

My question is:

1. Based on all of the provided information above, is what we are doing considered trademark infringement against Upper Bounce?

2. Should we respond to the Cease and Desist letter, which we were suggested may incriminate ourselves and show admittance of guilt?
We would like this information for going forward to have a definitive legal answer as to if what we are doing violates any laws and what our legal rights are as well.

I appreciate your time.

Sincerely,
Shem Weissman
Submitted: 1 year ago.
Category: Intellectual Property Law
Expert:  BizIPEsq. replied 1 year ago.

BizIPEsq. :

Hello, I will be assisting you

BizIPEsq. :

So to confirm, the parts that are made for their trampolines are not manufactured by them rather by a third party?

Customer:

Correct

Customer:

The parts we sell are manufactured by our suppliers, branded with our brand

Customer:

They have a similar setup

Customer:

They have a private label of extremely similar products

Customer:

The products are basically the same, just have different boxes they come in

Customer:

These are parts that are designed to fit other 3rd party brands/models of trampolines, such as those sold in Wal-Mart, K-Mart, etc...

BizIPEsq. :

Got it. And another confirmation, that you included the logo of the other company on the packaging of the sold parts and that is what triggered the C&D letter?

Customer:

No, we have our own logo and brand on our packaging

Customer:

Just as they have on theirs

Customer:

But in the listing on Amazon, which we listed our product on, it says "Upper Bounce Trampoline Net" etc..., Upper Bounce is their brand

BizIPEsq. :

Got it. Generally speaking it is permitted to use a trademark in the context of the commerce so long as there is not confusion created in the market place as to the origin of the goods

Customer:

Well that is the question... The listing / product has the name "Upper Bounce" associated with it on Amazon.com.

BizIPEsq. :

this means that it's ok to say generic parts for brand XYZ. The problem that Upper Bounce is probably having is that it may not be clear that your parts are in fact generic and not manufactured by them

Customer:

Our parts are not for upper bounce products.

Customer:

Let me give an example

Customer:

Wal-Mart sells a brand of trampoline called Bounce Pro.

Customer:

Us ("Power Trampoline"), as well as Upper Bounce, both make replacement parts that are designed to fit Bounce Pro trampolines

Customer:

Essentially, we are selling the same nets, but our nets come in cardboard boxes which have our brand name on the box, Upper Bounce comes in cardboard boxes that have the Upper Bounce logo on it

Customer:

The listing on Amazon says "Upper Bounce Trampoline Net to fit Bounce Pro Trampolines"...

Customer:

Does this make sense?

BizIPEsq. :

curious, why did you use the term upper bounce?

BizIPEsq. :

(in your amazon lisitng)

Customer:

So on Amazon sellers create listings to sell their products, the original creator of the listing makes the title and so on. If you have the same product as a seller, you can list your item on that listing. This creates competition amongst sellers and drives down prices (good for customers and makes them stay on amazon for low prices), as well as can be good for businesses because the listing may be a highly visible listing with lots of traffic, as oppose to if you create a new listing it may get pushed to page 20, and never get seen

Customer:

Amazon also has a policy where they dont want multiple listings of the same products

Customer:

Technically speaking, our product is not an Upper Bounce product. But 1. as they are otherwise than different shipping boxes, the same product., 2. Customers are not buying based on the brand name of the seller, 3. the only difference - the packaging - is not displayed, mentioned, or advertised anywhere within the listing, only the words "Upper Bounce" are in the title of the listing

Customer:

So I am trying to see if their technical putting the words Upper Bounce in their product listing page is enough to legally claim the product as being an "Upper Bounce" brand product, and which anything else being sold would be considered infringement

BizIPEsq. :

Well, the fault may lie with Amazon and not with you or upper bounce however ultimately if you have the ability to create your own listing and piggy back on Upper's listing then I suspect that is what you would be asked to do

BizIPEsq. :

so to the extent that you are listing your product other theirs because of Amazon's listing system does not excuse the possibility that you may be infringing Upper's TM

BizIPEsq. :

typo: so to the extent that you are listing your product UNDER theirs...

Customer:

So there's my question, what is considered as the infringement in this scenario

Customer:

Their trademark is based on a logo design / trade MARK, is just them having the words "upper bounce" in the product title without any actual trade mark give them the ability to say it is a Upper Bounce brand product?

BizIPEsq. :

contrary to popular belief, TM does is about protecting brands rather about protecting consumers. TM law is primarily concerned with avoiding confusion in the marketplace. If a consumer thinks they are purchasing Upper's product but they end up purchasing yours that is considered infringement

BizIPEsq. :

the point you make about their TM is interesting

Customer:

Heres a link to one of their listings:

Customer:

http://www.amazon.com/Upper-Bounce-Trampoline-Enclosure-Separately/dp/B003LHXVO6/ref=sr_1_2?ie=UTF8&qid=1371169653&sr=8-2&keywords=upper+bounce+trampoline+net

BizIPEsq. :

if they do not have a TM on the actual words but rather just on the logo then you may be in the clear because only words and not logos are displayed in the listing

Customer:

It only has the very generic, standard Amazon font type for the generic words Upper Bounce...

BizIPEsq. :

in their C&D are they demanding money or just removal?

Customer:

On some of there images they have this computer generated price tag kind of banner with their actual trademark logo, but 1. This is a computer generated image on top of an actual image, 2. this is not on the product itself, its on a tag over the product

BizIPEsq. :

(BTW, that would not matter)

Customer:

C&D is just demanding removal... We know them, they are relatively small company, unlikely they would actually go through expense and time of bringing us to court, we know they really just want us to stop competing with them

Customer:

But I want to know if we legally have to or not, and what if something similar with another company happens in the future, and can we do this to competitors who list on our brand listings?

Customer:

Which part would not matter? The type/words, or the computer generated trademark image?

BizIPEsq. :

Well then the choice is yours by continuing you are in a gray area. I would incline to say that you are infringing but this is only my personal opinion. Anytime confusion in the market place is crated and the mark in question is registered then that is actionable. Since you know that they are small and cannot afford to commence an action then you can take the business risk but I do think that notwithstanding the fact that Amazon's system allows this, listing your product under a different product is a problem

Customer:

Ok, I see

Customer:

So you are saying having the words Upper Bounce there is enough from their end? Or what about their listing do you feel makes it an actual "Upper Bounce" brand product, legally speaking?

BizIPEsq. :

Finally, you should consider answering the C&D without making admissions. You can say that you categorically deny their allegation yet you chose to remove the listings. Though I highly recommend that you consult with an attorney

Customer:

Ok, I see

BizIPEsq. :

Thank you for allowing me to assist you

BizIPEsq. :

Please rate my service

Customer:

"So you are saying having the words Upper Bounce there is enough from their end? Or what about their listing do you feel makes it an actual "Upper Bounce" brand product, legally speaking?"

BizIPEsq. :

without your rating I do not get compensated for my work

Customer:

Would you be able to answer this part?

Customer:

I do not mean to take your time, but I just want to get a solid understanding so I can report back to my boss :)

BizIPEsq. :

it is a listing for their product (the tag shows the net and their logo on it) a consumer buying from you will not be getting the same product

BizIPEsq. :

that's where the problem lies

Customer:

I see

Customer:

Ok, I understand

Customer:

Thank You for Your Time.

BizIPEsq. :

sure thing. The rate button is below. Thank you

Customer:

Thanks!

BizIPEsq., Attorney
Satisfied Customers: 996
Experience: I am a tech attorney and I represent clients with technology, internet and intellectual property matters
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