DATE 4 / 11 / 2019
Sometime around Christmas last year, I got a call from my mother. “Have you seen this new fur remover on TV. A friend of mine has it and says it’s wonderful. I think they’ve stolen your idea.” As a mom, I can tell you exactly where the panic button is on each one of my kids. My mom had just located mine and romped on it. A copycat product? On TV? Crap! Okay, I have lawyers and a legal fund set up for this. “Mom, what’s the name of this brush you’ve seen?” “Oh, well…I can ask my friend, but I think it’s something with Merlin in it…and fur?” Huh, seriously? Like what, Furlin Merlin?” “Yes, that’s it!”
As it turns out, my mom was talking about a lint brush called the Fur Wizard. You’ve seen a thousand like them before, and fifty thousand since. You swipe the brush one way, and it picks up a bit of lint or fur, then you wipe it off in its container. Inadvertently changing directions while you swipe results in the collected lint offloading back onto your clothes. As it’s really nothing like any of my products, I was not overly concerned.
Then, a few months later, on the Lilly Brush Amazon page, under the heading, “Customers who viewed this item also viewed:” my eye stopped dead on a spin-off Furlin Merlin Alibaba product with the name “Lilly” stamped on it. There it was…a problem. My heart turned frosty and I called my lawyer. “This should be easy;” he said, “just get their name and address and we’ll start with a simple cease and desist.”
Ahhh, damn! In my eight years of dealing with Amazon, I’ve learned that contacting sellers who infringe on trademarks or patents is, in almost every case, a lot like trying to catch a cockroach in the kitchen. As soon as you snap the lights on, they scuttle to some unknown dark place where you’ll never find them. They wait there, watching beady-eyed while you bumble around looking in all the wrong places, and then get right back down to chewing on your business when you’ve gone.
In the case of sellers who use Fulfillment by Amazon, ordering a product doesn’t even provide you with a warehouse return address to send Cease and Desist letters to, and, of course, messages sent through Amazon are steadfastly ignored, or worse, flagged as inappropriate, which rockets you into a whole new circle of Amazon hell.
Even googling seller names often points you towards companies with the same name who know nothing about their name being used on Amazon. (Note to self: Do not unleash the hell-dogs on innocent parties again.) Thus, hidden in every way behind Amazon’s Fulfillment By Amazon cloak, rogue MAP and IP infringers go about their nefarious ways uninterrupted while you implore someone, anyone, at Amazon to hear and act upon your case via the most cumbersome reporting system I have ever endured.
So, with no other option, I wrote Amazon about the “Lilly” fur remover. It was a clear infringement. Amazon wrote back to say: “Amazon respects a manufacturer’s right to enter into exclusive distribution agreements for its products. However, violations of such agreements do not constitute intellectual property rights infringement. As the enforcement of these agreements is a matter between the manufacturer and the retailers, it would not be appropriate for Amazon to assist in enforcement activities.”
Ugh! They thought I was having a disagreement with one of my own distributors? Wrong answer, Amazon-bot. I sent another message to clarify that this, in fact, was not a distributor disgruntlement, but a non-Lilly Brush fur remover infringing on the “Lilly” name. This apparently worked as the seller was then notified that their product was in violation of Amazon’s Seller Central policy, and the listing was taken down. I was happy. The system had worked. Then I got an email from the seller, and suddenly I began to suspect that instead of taking out a cockroach, I had in effect stomped on a kitten.
Essentially, the email politely explained that it had never been the seller’s intention to infringe on my trademark, and could I please write Amazon to retract my complaint so they could continue selling through their inventory?
Because the seller signed her full name, I was able to get bits and pieces of an online business profile showing a kind-looking woman in Texas. She was married, with grown children, and grand-children, and as I zoomed down out of the sky using the big eye of Google Earth, I found myself standing in the yard of a well-kept little house outside of town. I stood there looking at the garden that the seller had lovingly coaxed up from the hot Texas clay, and thought about what to do next.
I did not get into this business to hurt people. I started the Lilly Brush Company nine years ago, and there have been many times since that we have taken the long way around to do the “right” thing when a less honorable shortcut would have cost less time or money. There is only one thing I draw a hard line on and that is adherence to the rules of the road regarding our intellectual property and brand recognition. We can do the right thing and have the best reputation in the world, but if the lines around who we are blur or break down, all that can dissolve quickly.
I wrote back to say that I could not retract the complaint. The next day I received an email explaining that the seller wanted to apologize for any inconvenience caused by the matter, but that she and her husband were small business owners who had only ever sold a few books on Amazon. Having a product like this lint brush was for them a fairly new endeavor. They hadn’t meant to infringe, but had chosen to use their surname Lilly out of family pride. Now, upon reflection they could see how it might cause some confusion between our brands, thus they would remove the Lilly name from the listing.
At this point, I understood that even if I were to issue a retraction to Amazon, Seller Central would not accept their product with the name Lilly still stamped on each item, and actually, I couldn’t either. It also troubled me to see that their email was signed with “Lilly USA”.
I answered that evening.
Dear Mrs. XXXXXX
Thank you for your email.
I understand your predicament, but I am still concerned that you have not fully considered US patent and trademark laws as you have signed your email with Lilly USA. I hope you understand that by continuing to use the name Lilly for a lint and fur removal product or company it is a very clear infringement on my company’s trademark. I do not take this lightly as I have worked very hard for many years to build a company and reputation upon that trademark.
To fully understand this, please take a moment to read this explanation of these principles: https://www.trademarknow.com/blog/7-factors-for-identifying-trademark-likelihood-of-confusion
All this said, your problem reminds me of many I have weathered as the owner of a small business, so I have searched my mind for viable solutions that I might be able to recommend to you. I know you must have inventory that needs to be sold.
One possible solution is for you to quickly, but carefully, choose another name for your business. Read this before proceeding: https://www.sos.state.tx.us/corp/tradefaqs.shtml
Once you have a name, create a simple circular logo and have it made into the appropriate sized stickers (I recommend these guys for price and quality) https://www.stickergiant.com/ (Make sure to ask them to send a few samples first so you know if they will stay on) Slap those over the Lilly printed on your products each time you fulfill an order for Amazon, or ebay, or wherever, and you are back in business. It’s not easy, but it’s really the only legal way to get through your currently branded inventory. Note: You must change your Amazon, ebay, etc. listings to reflect your new name.
Please understand that I cannot allow you to sell fur and lint removers under the Lilly name. Doing so could set a legal precedent that might severely impact my company and brand in future if larger, more predatory companies attempted the same.
In response to my email, the seller wrote that they were grateful for the advice, and also believed that this would be their best course of action. When they stated that they would have to commission new photography for their listing and website, I was troubled. It would cost a great deal for them to do so. I wrote back.
One thought…given how expensive photographers are, I might recommend that you consult a freelance layout artist who can use Photoshop to simply change the name on the logo in all of your product photos. This person would also be able to generate an image for your stickers.
If you need the name of a someone who is very reasonably priced and quick, I would be happy to share one of my favorites with you.
To show you what I mean, I have attached an image of a screenshot that I modified as described. It took 3 minutes…very inexpensive alternative to photography.
Best of luck in all your pursuits. Let me know if you need the name of my freelance layout person.
The seller wrote back that she would very much appreciate the name of a reliable layout person. From that point on, we began to work together to get her products back online.
It has been a year since the seller and I first exchanged emails, and I am happy to report that we remain friends to this day, writing back and forth with ideas and advice and commiserations over the difficulty of navigating the Amazon jungle. We share our best resources and favorite musicians, and songs, and stories about our families, and wish each other well on holidays. When I last checked, the seller’s rebranded product was back on Amazon. I suppose you could say we are once again in competition for the same customers, but this time our seller souls are in sync, and with new understanding in our hearts, we are sincerely rooting for each other’s success.
Founder, Elsie Hamilton