Amazon Brand Registration and Registered Trademarks

Earlier this year, Amazon launched its Amazon Brand Registry, which is an effort to work with trademark owners to protect the customer experience on the Amazon site. Since that time, as the official correspondence address in my clients’ trademark registry, I have received many requests from Amazon asking to validate and verify trademark owners for the registry. Enrollment in the Amazon Trademark Registry provides trademark owners with enhanced tools to fight trademark infringement.

It’s well known that removing a listing or flagging a seller for trademark infringement has often been a difficult task at Amazon. Common types of trademark infringement or misuse I’ve seen there include:

• Someone sells their own product under their name, logo, or trademark
• Someone sells their own product with a similar, but not identical, name, logo, or trademark to yours.
• Someone appropriates your ad, but sends a different product
• Someone improperly files a claim of infringement against a trademark they own.

Handling things like the above generally required contacting Amazon’s automated service, eventually reaching out to a person, and analyzing the list or complaint and then potentially deleting it. This process was time consuming and cumbersome, especially if there was a violation by multiple users. And trademark owners could be caught up in a game of hitting the mole with listings that subsequently appear on different sellers’ accounts. The Amazon Trademark Registry is intended to facilitate and expedite the process of finding and handling potential trademark infringements on Amazon.com.

Now, users who are enrolled in the Amazon Brand Registry will be able to create and upload unique videos and photos that are connected 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 old system. Registered sellers have access to text searches, image searches, and automated responses to potential intellectual property infringements. Sellers who are enrolled will also appear more legitimate to prospective customers, who may choose to buy from that seller rather than one with a cheaper price but more questionable status.

Some points and prerequisites related to the Amazon Brand Registry:

• Only federally registered trademark owners are eligible to participate in the Amazon Trademark Registry. Common law trademarks and pending federal applications do not provide a basis for registration.
• Word marks are definitely eligible: they are sometimes referred to as “standard character marks” because they generally appear simply as capital letters without claiming style or font.
• Composite marks appear to be eligible. Amazon says that “words, letters or numbers in stylized form” and “illustration drawings[s] what includes[] words, letters and / or numbers “are eligible. This seems to imply that a brand or logo that has both text and graphic elements will qualify.
• It appears that pure design marks (graphic elements that do not have 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 being used on the product or product packaging.
• I have seen discussions that your trademark should be registered in the Main Registry, not the Supplementary Registry. However, I have not been able to verify this with Amazon.

If you are a trademark owner, consider the following to move forward:

• Registration of your trademark. Registration is a critical requirement for enrollment now, so this action must be taken.
• Filing the trademark application now. This process usually takes at least 6 to 7 months, and Amazon’s requirement that your brand be registered means that you need to start the registration process as soon as possible. The longer you wait to apply, the longer it will take before you can enroll.
• Registration of a wordmark version of your trademark, if you only have one design or compound trademark registered. Not only will the word mark be definitely eligible for enrollment in the Amazon Trademark Registry, it generally offers the best and broadest protection for your trademark in the largest market.
• Does the way you use your trademark on listings, products, and packaging match the trademark? Different spellings, spaces, hyphens, or other variations may limit your ability to use, or even enroll in, the Amazon Brand Registry.
• Failure to enroll in the Amazon Trademark Registry does not mean that you cannot report an alleged trademark infringement on Amazon, it just means that you will not have all of Amazon’s potential tools available to find and combat that infringement. It is often difficult and cumbersome for customers to monitor and eliminate trademark infringements.
• If your trademark is on the Supplemental Registry, consider moving it to the Main Registry. Not all brands are eligible for this and therefore attempting the move requires careful analysis along with a usage and archiving strategy.
• If you were enrolled in the Amazon Brand Registry before April 2017, you will not be automatically enrolled again. You have to manually re-enroll.