I 

117TH CONGRESS 

1ST SESSION H. R. 3429 

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 HOUSE OF REPRESENTATIVES 

MAY 20, 2021 

Mr. NADLER (for himself, Mr. ISSA, Mr. JOHNSON of Georgia, and Mr. 

CLINE) introduced the following bill; which was 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 2021’’ or the ‘‘SHOP SAFE Act of 2021’’. 


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

3 (a) PLATFORM LIABILITY.—Section 32 of the Act en4 titled ‘‘An Act to provide for the registration and protec5 tion of trademarks used in commerce, to carry out the pro6 visions of certain international conventions, and for other 

7 purposes’’, approved July 5, 1946 (commonly known as 

8 the ‘‘Trademark Act of 1946’’) (15 U.S.C. 1114), is 

9 amended by inserting at the end the following: 

10 ‘‘(4)(A) Subject to subparagraph (C), an elec11 tronic commerce platform shall be deemed 

12 contributorily liable in a civil action by the registrant 

13 for the remedies hereinafter provided for a case in 

14 which without the consent of the registrant, a third15 party seller uses in commerce a counterfeit mark in 

16 connection with the sale, offering for sale, distribu17 tion, or advertising of goods that implicate health 

18 and safety on the platform, unless the platform dem19 onstrates that the platform took each of the fol20 lowing steps to prevent such use on the platform be21 fore any infringing act by the third-party seller: 

22 ‘‘(i) Determined after a reasonable inves23 tigation, and reasonably periodically con24 firmed— 


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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 third-party seller 

5 located in the United States, and if the 

6 seller has not designated a registered agent 

7 under subclause (I), that the third-party 

8 seller has designated a verified address for 

9 service of process in the United States. 

10 ‘‘(ii) Verified through governmental identi11 fication or other reliable documentation the 

12 identity, principal place of business, and contact 

13 information of the third-party seller. 

14 ‘‘(iii) Required the third-party seller to— 

15 ‘‘(I) take reasonable steps to verify 

16 the authenticity of goods on or in connec17 tion with which a registered mark is used; 

18 and 

19 ‘‘(II) attest to the platform that the 

20 third-party seller has taken reasonable 

21 steps to verify the authenticity of the 

22 goods under subclause (I). 

23 ‘‘(iv) Imposed on the third-party seller as 

24 a condition of participating on the platform 

25 contractual requirements that— 


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1 ‘‘(I) the third-party seller agrees not 

2 to use a counterfeit mark in connection 

3 with the sale, offering for sale, distribu4 tion, or advertising of goods on the plat5 form; 

6 ‘‘(II) the third-party seller consents to 

7 the jurisdiction of United States courts 

8 with respect to claims related to the third9 party seller’s participation on the platform; 

10 and 

11 ‘‘(III) the third-party seller designates 

12 an agent for service of process in the 

13 United States, or, in the case of third14 party seller located in the United States, 

15 the third-party seller designates a verified 

16 address for service of process in the United 

17 States. 

18 ‘‘(v) Displayed conspicuously on the plat19 form the verified principal place of business, 

20 contact information, and identity of the third21 party seller, and the country from which the 

22 goods will be shipped, except the platform shall 

23 not be required to display any such information 

24 that constitutes the personal identity of an indi25 vidual, a home street address, or personal conVerDate Sep 11 2014 05:27 Jun 22, 2021 Jkt 019200 PO 00000 Frm 00004 Fmt 6652 Sfmt 6201 E:\BILLS\H3429.IH H3429

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1 tact information of an individual, and in such 

2 cases shall instead provide alternative, verified 

3 means of contacting the third-party seller. 

4 ‘‘(vi) Displayed conspicuously in each list5 ing the country of origin and manufacture of 

6 the goods, unless such information was not rea7 sonably available to the third-party seller and 

8 the third-party seller had identified to the plat9 form the steps it undertook to identify the 

10 country of origin and manufacture of the goods 

11 and the reasons it was unable to identify the 

12 same. 

13 ‘‘(vii) Required each third-party seller to 

14 use images that the seller owns or has permis15 sion to use and that accurately depict the ac16 tual goods offered for sale on the platform. 

17 ‘‘(viii) Implemented at no cost to the reg18 istrant reasonable proactive technological meas19 ures for screening goods before displaying the 

20 goods to the public to prevent any third-party 

21 seller’s use of a counterfeit mark in connection 

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

23 advertising of goods on the platform. 

24 ‘‘(ix) Implemented at no cost to the reg25 istrant a program to expeditiously disable or reVerDate Sep 11 2014 05:27 Jun 22, 2021 Jkt 019200 PO 00000 Frm 00005 Fmt 6652 Sfmt 6201 E:\BILLS\H3429.IH H3429

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1 move from the platform any listing for which a 

2 platform has reasonable awareness of use of a 

3 counterfeit mark in connection with the sale, of4 fering for sale, distribution, or advertising of 

5 goods. Reasonable awareness of use of a coun6 terfeit mark may be inferred based on informa7 tion regarding the use of a counterfeit mark on 

8 the platform generally, general information 

9 about the third-party seller, identifying charac10 teristics of a particular listing, or other cir11 cumstances as appropriate. A platform may re12 instate a listing disabled or removed under this 

13 clause if, after an investigation, the platform 

14 reasonably determines that a counterfeit mark 

15 was not used in the listing. A reasonable deci16 sion to reinstate a listing shall not be a basis 

17 for finding that a platform failed to comply 

18 with this clause. 

19 ‘‘(x) Implemented a policy that requires 

20 termination of a third-party seller that has rea21 sonably been determined to have engaged in re22 peated use of a counterfeit mark in connection 

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

24 advertising of goods on the platform. Use of a 

25 counterfeit mark by a third-party seller in three 


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1 separate listings within one year shall be con2 sidered repeated use, except when reasonable 

3 mitigating circumstances exist. A platform may 

4 reinstate a third-party seller if, after an inves5 tigation, the platform reasonably determines 

6 that the third-party seller did not engage in re7 peated use of a counterfeit mark or that rea8 sonable mitigating circumstances existed. A rea9 sonable decision to reinstate a third-party seller 

10 shall not be a basis for finding that a platform 

11 failed to comply with this clause. 

12 ‘‘(xi) Implemented at no cost to the reg13 istrant reasonable technological measures for 

14 screening third-party sellers to ensure that sell15 ers who have been terminated do not rejoin or 

16 remain on the platform under a different seller 

17 identity or alias. 

18 ‘‘(xii) Provided a verified basis to contact 

19 a third-party seller upon request by a registrant 

20 that has a bona fide belief that the seller has 

21 used a counterfeit mark in connection with the 

22 sale, offering for sale, distribution, or adver23 tising of goods on the platform except that the 

24 platform is not required to provide information 

25 that constitutes the personal identity of an indiVerDate Sep 11 2014 05:27 Jun 22, 2021 Jkt 019200 PO 00000 Frm 00007 Fmt 6652 Sfmt 6201 E:\BILLS\H3429.IH H3429

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1 vidual, a home street address, or personal con2 tact information of an individual (in such case, 

3 the provider shall provide an alternative means 

4 of contacting the third-party seller). 

5 ‘‘(B) In this paragraph: 

6 ‘‘(i) The term ‘counterfeit mark’ has the 

7 meaning given that term in section 34(d)(1)(B). 

8 ‘‘(ii) The term ‘electronic commerce plat9 form’ means any electronically accessed plat10 form that includes publicly interactive features 

11 that allow for arranging the sale, purchase, 

12 payment, or shipping of goods, or that enables 

13 a person other than an operator of such plat14 form to sell or offer to sell physical goods to 

15 consumers located in the United States. 

16 ‘‘(iii) The term ‘goods that implicate 

17 health and safety’ means goods the use of 

18 which can lead to illness, disease, injury, serious 

19 adverse event, allergic reaction, or death if pro20 duced without compliance with all applicable 

21 Federal, State, and local health and safety reg22 ulations and industry-designated testing, safety, 

23 quality, certification, manufacturing, packaging, 

24 and labeling standards. 


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1 ‘‘(iv) The term ‘third-party seller’ means a 

2 person other than the electronic commerce plat3 form who uses the platform to arrange for the 

4 sale, purchase, payment, or shipping of goods. 

5 ‘‘(C) This paragraph shall apply— 

6 ‘‘(i) to an electronic commerce platform 

7 that has annual sales on the platform of 

8 $500,000 or more; or 

9 ‘‘(ii) to an electronic commerce platform 

10 with less than $500,000 in annual sales six 

11 months after the platform has received ten no12 tices (in which there is a reference to this para13 graph and an explicit notification to the plat14 form of the ten-notice limit), in aggregate, iden15 tifying listings on the platform that reasonably 

16 could be determined to have used a counterfeit 

17 mark in connection with the sale, offering for 

18 sale, distribution, or advertising of goods that 

19 implicate health or safety. 

20 ‘‘(D) Nothing in this paragraph may be con21 strued to limit liability in a context other than that 

22 outlined in this paragraph, including any cause of 

23 action available under other provisions of this Act, 

24 notwithstanding that the same facts may give rise to 

25 a claim under this paragraph.’’. 


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1 (b) EFFECTIVE DATE.—This Act and the amend2 ment made by this Act shall take effect one year after 

3 the date of the enactment of this Act. 

Æ 


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