Passing SHOP SAFE with stronger requirements solves

In order to address the shortcomings of the current secondary infringement liability regime, Congress should codify contributory trademark infringement and counterfeiting liability as part of the Trademark Act. In addition, Congress should enact new laws that impose heightened anti-counterfeiting and anti-infringement obligations on e-commerce platforms. The USPTO should expressly support these legislative initiatives. The 116th Congress was previously considering proposed legislation aimed at imposing additional obligations for addressing certain counterfeit goods, through the SHOP SAFE Act. We support this type of legislation, although we believe the SHOP SAFE Act or future similar legislation should be revised to: (1) expand its scope to all goods and not just those that “implicate health and safety,” which is a vague and subjective standard; (2) establish a cause of action against an e-commerce platform that promotes listings for counterfeit goods through advertising or other means of elevating their visibility to consumers; (3) impose a three-strikes requirement for platforms to permanently disable a particular seller upon three actionable instances of infringement are notified or independently discovered; (4) impose additional seller vetting obligations such as confirming authentic identity, contact information, licensing documents, etc.; and (5) a requirement to provide legal rationale for any rejection of a brand owner notice to disable a listing identified as infringing.

These steps are necessary to ensure e-commerce platforms do their fair share in stymying counterfeiting and infringement online, and can be held accountable to brand owners and consumers for continuing to profit from illicit activity on their platforms.