II 

118TH CONGRESS 

1ST SESSION S. 2934 

To amend the Trademark Act of 1946 to provide for contributory liability 

for certain electronic commerce platforms for use of a counterfeit mark 

by a third party on such platforms, and for other purposes. 

IN THE SENATE OF THE UNITED STATES 

SEPTEMBER 26 (legislative day, SEPTEMBER 22), 2023 

Mr. COONS (for himself and Mr. TILLIS) introduced the following bill; which 

was read twice and referred to the Committee on the Judiciary 

A BILL 

To amend the Trademark Act of 1946 to provide for contributory liability for certain electronic commerce platforms for use of a counterfeit mark by a third party 

on such platforms, and for other purposes. 

1 Be it enacted by the Senate and House of Representa2 tives of the United States of America in Congress assembled, 

3 SECTION 1. SHORT TITLE. 

4 This Act may be cited as the ‘‘Stopping Harmful Of5 fers on Platforms by Screening Against Fakes in E-com6 merce Act of 2023’’ or the ‘‘SHOP SAFE Act of 2023’’. 


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1 SEC. 2. CONTRIBUTORY LIABILITY FOR ELECTRONIC COM2 MERCE PLATFORMS. 

3 (a) IN GENERAL.—Section 32 of the Act entitled ‘‘An 

4 Act to provide for the registration and protection of trade5 marks used in commerce, to carry out the provisions of 

6 certain international conventions, and for other purposes’’, 

7 approved July 5, 1946 (commonly known as the ‘‘Trade8 mark Act of 1946’’) (15 U.S.C. 1114), is amended by add9 ing at the end the following: 

10 ‘‘(4)(A) Except as provided in subparagraph 

11 (B), an electronic commerce platform shall be 

12 contributorily liable in a civil action under paragraph 

13 (1) for a case in which a third-party seller is shown 

14 to have used in commerce a counterfeit mark in con15 nection with the sale, offering for sale, distribution, 

16 or advertising of a good that implicates health and 

17 safety on the platform. 

18 ‘‘(B) An electronic commerce platform shall not 

19 be subject to contributory liability under subpara20 graph (A) if the electronic commerce platform dem21 onstrates that the platform took reasonable meas22 ures to implement each of the following steps to pre23 vent infringing use by the applicable third-party sell24 er on the platform before that infringing use: 

25 ‘‘(i) Determined after an investigation and 

26 periodically confirmed— 


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1 ‘‘(I) that the third-party seller des2 ignated a registered agent in the United 

3 States for service of process; or 

4 ‘‘(II) in the case of a third-party seller 

5 located in the United States that has not 

6 designated a registered agent under sub7 clause (I), that the third-party seller has 

8 designated a verified address for service of 

9 process in the United States. 

10 ‘‘(ii) Imposed on the third-party seller as a 

11 condition of participating on the electronic com12 merce platform requirements that the third13 party seller— 

14 ‘‘(I) consents to the jurisdiction of the 

15 courts of the United States with respect to 

16 claims related to participation by the third17 party seller on the platform; and 

18 ‘‘(II) uses images on the electronic 

19 commerce platform that accurately depict 

20 the goods sold, offered for sale, distributed, 

21 or advertised on the electronic commerce 

22 platform. 

23 ‘‘(iii) Provided accessible electronic means 

24 by which a registrant and consumer can notify 


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1 the electronic commerce platform of suspected 

2 use of a counterfeit mark. 

3 ‘‘(iv)(I) Implemented at no charge from 

4 the electronic commerce platform to registrants 

5 proactive measures for screening listings for 

6 goods before displaying the goods to the public 

7 to prevent the use by any third-party seller of 

8 a counterfeit mark in connection with the sale, 

9 offering for sale, distribution, or advertising of 

10 goods on the platform. 

11 ‘‘(II) For purposes of implementing the 

12 proactive measures described in subclause (I)— 

13 ‘‘(aa) a registrant shall provide the 

14 applicable electronic commerce platform 

15 with a notice of the mark of the registrant 

16 and a point of contact in advance; and 

17 ‘‘(bb) the applicable electronic com18 merce platform may not require that a reg19 istrant participate in any program specific 

20 to the electronic commerce platform. 

21 ‘‘(III) An electronic commerce platform 

22 shall not be liable under subparagraph (A) for 

23 failure to comply with subclause (I) if the reg24 istrant has not provided the platform with the 

25 information required under subclause (II) and 


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1 information relating to the mark is not publicly 

2 available. 

3 ‘‘(IV) If the screening described in sub4 clause (I) blocks goods from being displayed on 

5 the applicable electronic commerce platform, the 

6 electronic commerce platform shall allow an op7 portunity for the applicable third-party seller to 

8 provide proof that the goods in question are not 

9 counterfeit. 

10 ‘‘(v)(I) Implemented at no charge from the 

11 electronic commerce platform to registrants a 

12 program to expeditiously disable or remove 

13 from the platform any listing for which the 

14 platform has actual or constructive knowledge 

15 of the use of a counterfeit mark in connection 

16 with the sale, offering for sale, distribution, or 

17 advertising of goods. 

18 ‘‘(II) For the purposes of subclause (I), 

19 constructive knowledge of the use of a counter20 feit mark may be inferred based on information 

21 gathered by the applicable electronic commerce 

22 platform (including information submitted by 

23 registrants to the electronic commerce plat24 form), including information regarding— 


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1 ‘‘(aa) the use of a counterfeit mark on 

2 the platform; 

3 ‘‘(bb) the allegedly infringed registra4 tion; 

5 ‘‘(cc) identifying characteristics of a 

6 particular listing or third-party seller; or 

7 ‘‘(dd) other circumstances, as appro8 priate. 

9 ‘‘(III) An electronic commerce platform 

10 may reinstate a listing disabled or removed 

11 under this clause, if, after an investigation initi12 ated by the platform or upon request of the af13 fected third-party seller, the platform reason14 ably determines that a counterfeit mark was 

15 not used in the listing. 

16 ‘‘(IV) A verified decision to reinstate a list17 ing under subclause (III) shall not be a basis 

18 for finding that the applicable electronic com19 merce platform failed to comply with this 

20 clause. 

21 ‘‘(vi)(I) Implemented a publicly available, 

22 written policy that requires termination of a 

23 third-party seller that has been determined to 

24 have engaged in repeated use of a counterfeit 

25 mark in connection with the sale, offering for 


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1 sale, distribution, or advertising of goods on the 

2 electronic commerce platform. 

3 ‘‘(II) The use of a counterfeit mark by a 

4 third-party seller in 3 separate listings during a 

5 1-year period typically shall be considered re6 peated use for the purposes of subclause (I), 

7 but an electronic commerce platform may allow 

8 a third-party seller to remain active after re9 peated use of a counterfeit mark when miti10 gating circumstances exist. 

11 ‘‘(III) The determination of whether miti12 gating circumstances exist for the purposes of 

13 subclause (II) shall consider the overall activity 

14 of the applicable third-party seller, efforts the 

15 third-party seller has taken to cure supply-chain 

16 concerns, third-party seller intent, the scope 

17 and nature of the defenses offered by the third18 party seller, efforts the third-party seller takes 

19 to refute or resolve disputes once notified of a 

20 concern, and any other factor considered rel21 evant by a court. 

22 ‘‘(IV) An electronic commerce platform 

23 may reinstate a third-party seller after termi24 nating the third-party seller under subclause 

25 (I), if, after an investigation initiated by the 


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1 platform or upon request of the affected third2 party seller, the platform determines that the 

3 third-party seller did not engage in repeated use 

4 of a counterfeit mark or that mitigating cir5 cumstances exist. 

6 ‘‘(V) A verified decision by an electronic 

7 commerce platform under subclause (IV) to re8 instate a third-party seller shall not be a basis 

9 for finding that the platform failed to comply 

10 with this clause. 

11 ‘‘(vii) Implemented at no charge from the 

12 electronic commerce platform to registrants 

13 measures for screening third-party sellers to en14 sure that third-party sellers that have been ter15 minated under clause (vi) do not rejoin or re16 main on the platform under a different seller 

17 identity or alias. 

18 ‘‘(viii) Provided a verified basis, upon re19 quest of a registrant, for the registrant to con20 tact a third-party seller, or the designated 

21 agent of a third-party seller for service of proc22 ess, if the registrant has a bona fide belief that 

23 the third-party seller has used a counterfeit 

24 mark of a mark belonging to the registrant in 

25 connection with the sale, offering for sale, disVerDate Sep 11 2014 07:04 Sep 27, 2023 Jkt 039200 PO 00000 Frm 00008 Fmt 6652 Sfmt 6201 E:\BILLS\S2934.IS S2934

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1 tribution, or advertising of goods that implicate 

2 health and safety on the electronic commerce 

3 platform, except that the platform is not re4 quired to provide information that constitutes 

5 the personal identity of an individual, a residen6 tial street address, or personal contact informa7 tion of an individual (and, in such case, the 

8 platform shall provide an alternative means of 

9 contacting the third-party seller). 

10 ‘‘(C) The determination of whether the meas11 ures in this paragraph are reasonable shall consider 

12 the size and resources of an electronic commerce 

13 platform, the nature of the goods and services pro14 vided by the platform, available technological and 

15 non-technological solutions, the amount of informa16 tion provided by a registrant to the platform, and 

17 any other factor considered relevant by a court. 

18 ‘‘(D)(i) This paragraph shall apply to an elec19 tronic commerce platform— 

20 ‘‘(I) that has sales on the platform in the 

21 current or previous calendar year in an amount 

22 of not less than $500,000; or 

23 ‘‘(II) with less than $500,000 in sales on 

24 the platform in the current or previous calendar 

25 year, beginning on the date that is 180 days 


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1 after the date on which the platform receives 

2 the tenth notice, in aggregate, that qualifies 

3 under clause (ii). 

4 ‘‘(ii) To count toward the aggregate 10-notice 

5 threshold under clause (i)(II), a notice shall— 

6 ‘‘(I) include a reference to this paragraph; 

7 ‘‘(II) include an explicit notification of the 

8 10-notice threshold and the requirement of the 

9 applicable electronic commerce platform to pub10 lish the information under clause (iii); and 

11 ‘‘(III) identify a listing on the applicable 

12 electronic commerce platform that reasonably 

13 could be determined to have used a counterfeit 

14 mark in connection with the sale, offering for 

15 sale, distribution, or advertising of goods that 

16 implicate health and safety. 

17 ‘‘(iii) Not later than 30 days after the date on 

18 which an electronic commerce platform described in 

19 clause (i)(II) receives the first notice under clause 

20 (ii), the platform shall make publicly available an at21 testation that— 

22 ‘‘(I) the sales of goods on the platform in 

23 the current or previous calendar year were less 

24 than $500,000; and 


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1 ‘‘(II) includes an aggregate count of the 

2 notices received by the platform that qualify 

3 under clause (ii), which shall be updated upon 

4 receipt of additional notices by the platform. 

5 ‘‘(E) An electronic commerce platform shall im6 plement and maintain reasonable security procedures 

7 and practices, including administrative, physical, and 

8 technical safeguards, appropriate to the nature of 

9 the data and the purposes for which the data will be 

10 used, to protect the data collected to comply with 

11 the requirements of this paragraph from unauthor12 ized use, disclosure, access, destruction, or modifica13 tion. 

14 ‘‘(F) This paragraph may not be construed to 

15 limit liability or defenses in contexts other than 

16 those described in this paragraph, including any 

17 cause of action or defenses available under any other 

18 provision of this Act, notwithstanding that the same 

19 facts may give rise to a claim under this paragraph. 

20 ‘‘(G) With respect to fiscal year 2024, and each 

21 fiscal year thereafter, the amounts in subparagraph 

22 (D) shall be increased by an amount equal to the 

23 percentage increase during the preceding fiscal year, 

24 if any, in the Consumer Price Index for All Urban 

25 Consumers published by the Department of Labor. 


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1 ‘‘(H) In this paragraph: 

2 ‘‘(i) The term ‘consumer product’ has the 

3 meaning given the term in section 101 of the 

4 Magnuson-Moss Warranty—Federal Trade 

5 Commission Improvement Act (15 U.S.C. 2301) 

6 and section 700.1 of title 16, Code of Federal 

7 Regulations, or any successor regulation. 

8 ‘‘(ii) The term ‘counterfeit mark’ has the 

9 meaning given the term in section 34(d)(1)(B). 

10 ‘‘(iii) The term ‘electronic commerce plat11 form’— 

12 ‘‘(I) means any person or entity that 

13 operates a consumer-directed electronically 

14 based or accessed platform that— 

15 ‘‘(aa) includes features that allow 

16 for, facilitate, or enable third-party 

17 sellers to engage in the sale or pur18 chase of a consumer product in the 

19 United States; and 

20 ‘‘(bb) is used by 1 or more third21 party sellers; and 

22 ‘‘(II) does not include any electroni23 cally-accessed platform that— 

24 ‘‘(aa) prohibits the sale of goods 

25 by a third-party seller; and 


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1 ‘‘(bb) takes reasonable steps to 

2 prevent an unauthorized third-party 

3 sale or offer for sale. 

4 ‘‘(iv) The term ‘good that implicates health 

5 and safety’ means a consumer product, the use 

6 of which can lead to illness, disease, injury, se7 rious adverse event, allergic reaction, or death, 

8 if the consumer product is produced without 

9 compliance with all applicable Federal, State, 

10 and local health and safety regulations and in11 dustry-designated testing, safety, quality, cer12 tification, manufacturing, packaging, and label13 ing standards. 

14 ‘‘(v) The term ‘third-party seller’ means 

15 any seller, independent of an electronic com16 merce platform, that sells, offers to sell, or con17 tracts to sell a consumer product in the United 

18 States through an electronic commerce plat19 form.’’. 

20 (b) EFFECTIVE DATE.—This section, and the amend21 ments made by this section, shall take effect on the date 

22 that is 1 year after the date of enactment of this Act. 

Æ 


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