Trademark registrations are critical for selling on Amazon
Selling products through Amazon in the US can be lucrative if done wisely. One crucial factor in selling products under your own brand is to make sure you comply with Amazon’s intellectual property policy and block competitors from using your brand. The reason why trademarks matter to Amazon sellers is that competitors will quickly try to trade off a brand gaining in popularity.
What is Amazon’s trademark policy?
To help sellers protect their proprietary trademarks, Amazon’s brand registry enables vendors to enroll and record their registered trademarks. The keyword here is registered, which means a proper trademark registration issued by the US Patent and Trademark Office. Once your trademark registrations are entered into the brand registry, sellers on Amazon can avail themselves of significant benefits in protecting against copycats.
Can unregistered trademarks be entered into Amazon’s brand registry?
No, only federally registered trademarks are eligible for the brand registry. Amazon has chosen not to be the judge of any common law unregistered trademark rights between disputed parties. A trademark registration by the USPTO creates legal presumptions such as:
- the validity of the trademark
- the ownership of the registration (i.e., the owner identified on the registration is the valid owner of the trademark)
- the trademark owner has exclusive rights to use the mark on the goods or services identified in the registration throughout the US
What can delay a US trademark application?
An improper initial filing can create delay in the registration process, which would then postpone a seller’s ability to enroll in Amazon’s brand registry. An experienced US trademark attorney can spot issues early on and prepare a trademark application that would avoid common pitfalls.
For example, the mark may contain certain words that might be considered generic or highly descriptive. In such cases, a skilled US trademark attorney can make suggestions for avoiding an Office Action rejection.
What can speed up the US trademark registration process?
Certain due diligence steps taken before filing a trademark application can save a significant amount of time in the trademark registration process. For example, a knockout search conducted prior to filing could be highly beneficial in identifying highly similar trademark filings. This may help avoid an Office Action rejection based on likelihood of confusion.
Using pre-approved terms for particular goods and services would also speed up the examination by avoiding an Office Action requiring the rewording of the identification of goods/services.
For Intent-To-Use applications, filing an Amendment to Allege Use (AAU) prior to the Notice of Publication can avoid a more lengthy process of having to submit a Statement of Use during the period after a Notice of Allowance.
What if a trademark registration is improper?
While registrations cannot be attacked through Amazon, competitors can file a cancellation proceeding against a trademark registration with the Trademark Trial and Appeal Board (TTAB) at the USPTO. Therefore, it is crucial to the ongoing success of a seller to obtain trademark registration without defects that would otherwise make the registration vulnerable.
What are possible defects in a trademark registration?
Just because the USPTO issues a registration does not mean that the registration will be protected from attacks.
Some of the more common errors we have seen include:
- adding goods or services that were never is in use in US commerce;
- adding too many goods or services in an Intent-To-Use application which the applicant never intended to sell in the US;
- identifying the wrong company as the applicant;
- applying for one mark, but using a different mark on the product.
How to report trademark infringement to Amazon
Owners of federally registered trademarks who are enrolled in the brand registry may submit Amazon’s Report Infringement form. This can be an effective weapon against competitors who attempt to hijack a listing.
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