Earlier this year, Amazon rolled out its Amazon Brand Registry, which is an effort to work with registered trademark owners to protect the customer experience on Amazon’s site. Since that time, as the official correspondence address on my clients’ trademark registration, I have received many requests from Amazon asking to validate and verify trademark owners for the registry. Enrollment in the Amazon Brand Registry provides trademark owners with improved tools for fighting trademark infringement.
It is well known that having a listing removed or a seller flagged for trademark infringement has often been a difficult endeavor on Amazon. Common types of trademark infringement or misuse I’ve seen there include:
- Someone sells their own product using your name, logo, or trademark
- Someone sells their own product using a name, logo, or trademark that is similar, but not identical, to yours
- Someone hijacks your listing but ships a different product
- Someone improperly lodges an infringement claim against a trademark you own
Handling things like the above generally required contacting Amazon’s automated service, eventually getting through to a person, and having the listing or complaint analyzed and then potentially taken down. This process was slow and cumbersome, especially if there was infringement by multiple users. And trademark owners could find themselves in a game of whack-a-mole with listings subsequently popping up under different seller’s accounts. The Amazon Brand Registry is intended to ease and speed the process of finding and handling potentially trademark infringement on Amazon.com.
Now, users who are enrolled with the Amazon Brand Registry will be able to create and upload unique videos and photos that are keyed to their accounts. Misuse of that content by others is easier to find and stop. Enrollment also gives you a faster takedown process, letting you clear infringement more quickly than with the old system. Enrolled sellers have access to text searches, image searches, and automated responses to potential intellectual property infringement. Sellers who are enrolled will also appear more legitimate to prospective customers, who may opt to purchase from that seller rather than one with a cheaper price but a more questionable status.
Some points and prerequisites concerning the Amazon Brand Registry:
- Only owners of federally registered trademarks are eligible to participate in the Amazon Brand Registry. Common law trademarks and pending federal applications do not provide an enrollment basis.
- Word marks are definitely eligible – these are sometimes known as “standard character marks” because they usually appear simply as capital letters without claim to style or font.
- Composite marks appear to be eligible. Amazon says that “words, letters, or numbers in a stylized form” and “illustration drawing[s] which include words, letters, and/or numbers” are eligible. This seems to imply that a mark or logo having both text and graphical elements will qualify.
- It appears that pure design marks – graphical elements which have no text, words, or letters – may not qualify.
- You will need to provide proof of your registered trademark, as well as proof of how the mark is actually being used on the product or packaging for the product.
- I’ve seen discussion that your trademark has to be registered on the Principal Register, not the Supplemental Register. I have not been able to verify this with Amazon, however.
If you are a trademark owner, consider the following for moving forward:
- Registering your trademark. Registration is a fundamental requirement for enrollment now, so this action must be taken.
- Filing the application for trademark registration now. This process typically takes at least 6-7 months, and Amazon’s requirement that your mark be registered means you should start the registration process sooner rather than later. The longer you wait to file, the longer it will take before you can enroll.
- Registering a word mark version of your mark, if you only have a design or composite mark registered. The word mark will not only be definitely eligible for enrollment in the Amazon Brand Registry, but it typically offers the best and broadest protection for you trademark in the larger marketplace.
- Does the way you use your trademark on listings, products, and packaging match the registered trademark? Different spelling, spacing, hyphenation, or other variations can limit your ability to use, or potentially even enroll, in the Amazon Brand Registry.
- Failure to enroll in the Amazon Brand Registry does not mean you cannot report alleged trademark infringement on Amazon, it just means you won’t have all of Amazon’s potential tools available to you for finding and combating that infringement. Typically, clients find it difficult and cumbersome to monitor and remove trademark infringement.
- If your trademark is on the Supplemental Register, consider moving it to the Principal Register. Not all marks are eligible for this and so attempting the move requires careful analysis together with a use and filing strategy.
- If you were enrolled in the Amazon Brand Registry before April 2017, you will not be automatically re-enrolled. You have to manually re-enroll.