Why do registered trademarks matter to Amazon sellers?
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.
Trademarks are not the only IP protection Amazon sellers can get from enrolling in Brand Registry. Amazon sellers who own patents can enforce their utility or design patent rights against copycat competing listings more effectively once enrolled in Brand Registry.
What is Amazon’s trademark policy?
To help sellers protect their proprietary trademarks, Amazon brand registry enables vendors to enroll and record their registered trademarks. The keyword here is registered or about to be registered. This means a proper trademark registration issued by the US Patent and Trademark Office, or a trademark application that is about to register. Once your trademark registrations are entered into the brand registry, Amazon sellers 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
- ownership of the registration (i.e., the owner identified on the registration is the valid owner of the trademark)
- exclusive rights of the trademark owner to use the mark on the goods or services identified in the registration throughout the US
A pending trademark application, however, may be sufficient to enable a seller to apply for Amazon Brand Registry. So you can get started with Brand Registry by filing a trademark application, but you would ultimately need a trademark registration to take full advantage of all the benefits of the Brand Registry.
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 Amazon sellers do to speed up the 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.
Amazon sellers with protectable trademarks can lose precious time by making sloppy mistakes. For example, describing a product inaccurately can lead to delays. 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.
Are you an Amazon seller with trademarks to protect?
Reach out to patent and trademark lawyer Vic Lin or call (949) 223-9623 to see if we can help you register your trademark and gain protection against Amazon sellers using similar names.
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