Earlier this year, Amazon launched its Amazon Brand Registry, which is an effort to work with trademark owners to protect the customer experience on Amazon’s site. Since then, as the official mailing address on my clients’ brand registry, I have received many requests from Amazon requesting to validate and verify brand owners for registration. Enrollment in the Amazon Brand Registry provides trademark owners with enhanced tools to combat trademark infringement.
It is well known that removing a listing or flagging a seller for trademark infringement has often been a difficult task on Amazon. Common types of trademark infringement or misuse I’ve seen there include:
-
Someone sells their own product using their name, logo, or trademark
-
Someone is selling their own product with a name, logo, or trademark that is similar, but not identical, to yours.
-
Someone hijacks your listing but submits a different product
-
Someone improperly files an infringement claim against a trademark they own
Handling things like the above usually required contacting Amazon’s automated service, eventually reaching out to a person and looking into the listing or complaint and then potentially deleting it. This process was slow and cumbersome, especially if there was a breach by multiple users. And trademark owners could find themselves in a game of whack-a-mole with listings subsequently appearing on different sellers’ accounts. The Amazon Brand Registry is intended to make it easier and faster to find and handle potential trademark infringements on Amazon.com.
Now, users who are enrolled in Amazon Brand Registry will be able to create and upload unique videos and photos that are linked to their accounts. Misuse of that content by others is easier to find and stop. Enrollment also gives you a faster removal process, allowing you to remove the violation more quickly than with the previous system. Registered sellers have access to text searches, image searches, and automated responses to potential intellectual property infringements. Sellers who are signed up will also appear more legitimate to potential customers, who may choose to buy from that seller rather than one with a lower price but more questionable status.
Some points and prerequisites regarding Amazon Trademark Registration:
-
Only federally registered trademark owners are eligible to participate in the Amazon Brand Registry. Common law trademarks and pending federal applications do not provide a basis for registration.
-
Wordmarks are definitely eligible; they are sometimes referred to as “standard character marks” because they usually appear simply as capital letters with no claim to style or font.
-
Composite brands appear to be eligible. Amazon says that “words, letters, or numbers in stylized form” and “illustration drawing[s] what includes[] words, letters and/or numbers.” This seems to imply that it will qualify a mark or logo that has both text and graphic elements.
-
It appears that pure design marks (graphic elements that have no text, words, or letters) may not qualify.
-
You will need to provide proof of your trademark, as well as proof of how the trademark is actually used on the product or product packaging.
-
I have seen the discussion that your trademark has to be registered in the Main Registry, not in the Supplementary Registry. However, I have not been able to verify this with Amazon.
If you are a trademark owner, consider the following moving forward:
-
Registration of your brand. Registration is a critical requirement for enrollment now, so this action must be taken.
-
Filing the trademark registration application now. This process usually takes at least 6-7 months, and Amazon’s requirement that your trademark be registered means that you should start the registration process as soon as possible. The longer you wait to apply, the longer it will be before you can enroll.
-
Register a word mark version of your mark, if you only have a registered design or composite mark. The word mark will not only definitely be eligible for registration in the Amazon Brand Registry, but typically offers the best and broadest protection for your trademark in the largest marketplace.
-
Does the way you use your trademark on listings, products and packaging match the registered trademark? Differences in spelling, spacing, hyphenation, or other variations may limit your ability to use, or potentially even enroll in, the Amazon Brand Registry.
-
Not enrolling in the Amazon Brand Registry does not mean that you cannot report suspected trademark infringement to Amazon, it just means that you will not have all of Amazon’s potential tools at your disposal to find and combat such infringement. Typically, clients find it difficult and cumbersome to monitor and remove trademark infringements.
-
If your trademark is on the Supplementary Registry, consider moving it to the Main Registry. Not all brands are eligible for this, so attempting the move requires careful analysis along with a use and file strategy.
-
If you were enrolled in the Amazon Brand Registry before April 2017, you will not be automatically re-enrolled. You have to re-enroll manually.