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In recent years, online sellers, especially those using marketplaces like Amazon or eBay, have seen a rise in trademark infringement lawsuits filed under Schedule A. These cases often involve brand owners suing dozens or even hundreds of defendants at once, accusing them of selling counterfeit or infringing goods.
However, not every seller listed in a Schedule A complaint is guilty of infringement. There are several valid defenses that may apply, depending on the facts of the case. Below are five of the most common defenses used to challenge Schedule A claims.
1. The Trademark Claim Is Invalid or Overbroad
One of the first lines of defense is questioning the validity of the trademark itself. A Schedule A claim cannot stand if the asserted trademark is:
- Generic or descriptive without secondary meaning
- Abandoned due to non-use
- Obtained through fraudulent representations
- Not actually used in commerce in the claimed way
Courts in Illinois and across the country require plaintiffs to prove they hold a valid, enforceable mark. If a brand has allowed others to use the same or similar marks freely, or if it overreaches beyond its registration scope, the claim can fall apart quickly.
2. The Defendant’s Use Qualifies as Fair Use
Another powerful defense is fair use, which applies when a seller uses a trademark not to mislead consumers, but to accurately describe their own product or service.
For example, an online retailer may reference a brand name to explain product compatibility (“fits Brand X vacuums”) or to identify genuine resale items. As long as the use is truthful and not misleading, courts may find that it qualifies as nominative or descriptive fair use, both of which are valid defenses to Schedule A claims.
3. There Is No Personal Jurisdiction Over the Defendant
Because Schedule A cases often target numerous online sellers, many defendants are located outside Illinois or even outside the United States. Plaintiffs must show that each defendant has sufficient minimum contacts with the forum state.
If the seller has not purposefully directed business toward Illinois, such as through sales or advertising targeting Illinois customers, the court may lack personal jurisdiction, and the case can be dismissed as to that defendant.
4. The Defendant Did Not Sell or Offer Counterfeit Goods
In some cases, defendants are named in error. The plaintiff’s investigators or automated systems may have identified the wrong seller or misunderstood a listing.
If a seller can show that they sold genuine products, or that they never made the sale alleged in the complaint, that evidence can serve as a complete defense. Maintaining accurate records, invoices, and supplier documentation can make all the difference in proving authenticity.
5. The Plaintiff’s Evidence Is Insufficient or Improperly Obtained
Schedule A complaints often rely on screenshots or test purchases made by investigators. These materials may be incomplete, misleading, or lack the necessary authentication to stand up in court.
Defendants can challenge the quality and reliability of the evidence, as well as question whether the plaintiff properly served notice or followed court procedures before freezing assets or obtaining injunctions. When procedural missteps occur, the entire claim may be subject to dismissal or modification.
Protecting Your Business Against Overbroad Schedule A Actions
Schedule A lawsuits can be intimidating, especially when they involve asset freezes or default judgments. But there are legal options to protect your rights and minimize harm to your business.
At The Keleher Law Group, LLC, we represent sellers and businesses facing trademark and unfair competition claims in Illinois federal courts. Our team helps you assess the strength of the plaintiff’s case, identify viable defenses, and pursue efficient resolutions that safeguard your online operations. Contact us today to schedule a consultation and discuss your defense strategy.
Frequently Asked Questions About Schedule A Defenses
What is a Schedule A lawsuit?
A Schedule A lawsuit is a type of federal case where a trademark owner sues multiple online sellers at once, alleging counterfeit or trademark infringement. The defendants are listed on a confidential “Schedule A” attached to the complaint.
Can I be sued in Illinois if I live or operate my business in another state or country?
Not always. Courts must have personal jurisdiction over each defendant. If your business has no meaningful connection to Illinois, such as sales or marketing directed to Illinois customers, you may be able to challenge the lawsuit on jurisdictional grounds.
What if I sold genuine products, not counterfeits?
If your listings or inventory involve authentic goods, you may have a strong defense. Providing invoices, supplier information, and proof of authenticity can help show that the claim is unfounded.
Can a Schedule A case be dismissed or settled?
Yes. Many Schedule A defendants resolve cases through negotiated settlements or dismissals, depending on the strength of the plaintiff’s evidence and your available defenses. An attorney can help you determine the most cost-effective approach.