With nearly 50% of all e-commerce sales in the United States and over 12 million products sold, Amazon Marketplace is the premiere platform for third party e-commerce retailers. Amazon’s intuitive interface and ubiquity allows sellers to complete registration and begin selling products through Amazon Marketplace in a matter of minutes. This means that it no longer takes your business years, but instead mere hours, to develop brand reputation and goodwill. While Amazon Marketplace provides numerous downstream benefits to its e-commerce sellers, such as instant access to Amazon Prime eligibility, enhanced visibility sales through Amazon’s algorithm, and access to Amazon’s customer service, the global exposure of a seller’s products to potential intellectual property theft and piracy remains a major concern. The good news is there is still time to protect your business.
To protect your brand as an Amazon seller, it is essential for you to understand the importance of trademark protection, Amazon’s trademark policies, enforcing your trademark rights, and the consequences of a reactive trademark strategy.
The Importance of Trademarks for Amazon Sellers
Amazon sellers’ products and brands receive immediate exposure to potentially millions of browsing customers daily. A trademark is a form of intellectual property protection which protect names, logos, designs, or expressions that distinguishes the source of a products. For Amazon Marketplace sellers, trademarks can be used to protect Amazon store names and logos, slogans, product packaging, and the non-functional design of products. Though much less common, a trademark may even be used to protect a sound, scent, or color. A seller’s brand is the face of their business, cementing its reputation and promising a certain degree of quality to its consumers. To establish, grow, and maintain a brand on a platform as large as Amazon is no small feat. Therefore, your brand requires a comprehensive trademark strategy to ensure its long term success.
Filing for a federal trademark registration is relatively inexpensive and allows you to protect your brand against infringers throughout the United States. A federal trademark registration serves as evidence from the United States government that you are the owner of your brand and the only party entitled to use that brand in the designated class(es) of goods or services. When weighing the inexpensive filing fees of $250 to $400 and the nominal prosecution timeline of a trademark application, typically only 6-9 months, against the hefty costs of trademark litigation or loss of your brand, the risk to reward ratio makes filing a trademark application a “no brainer.”
In addition to establishing ownership and protecting brands from trademark infringement, a federal trademark registration acts as prima facie evidence as to the validity of the trademark should you have to enforce your mark in the future. This means that when disputes arise surrounding your trademark, you are presumed to be the rightful owner with the exclusive right to use the trademark nationwide with the goods or services listed in the trademark registration.
On a global e-commerce platform as large as Amazon, presumptive ownership of your brand is crucial in protecting your business’s products and reputation. For this reason, Amazon incentivizes its sellers to register their trademarks with the government by providing greater protection on the Amazon platform for sellers who have applied for a federal trademark application.
If you’re looking to protect your brand overseas, please see this article on international trademarking.
Amazon’s Protection for Trademark Holders
There are over two million sellers with goods listed on Amazon. This massive quantity of direct competitors within the same market channel illustrates how critical protecting your brand with a trademark application is for every Amazon seller. To assist with brand protection, Amazon has created a special brand registry with the explicit goal of highlighting qualifying brands and providing trademark owners, with the benefits of exclusive brand protection ensuring generic brands can’t claim the benefits of branded products. For parties who are not qualified or are otherwise unable to list their brand on Amazon’s Brand Registry, Amazon’s trademark policy requires that those sellers educate themselves and be prepared to police their own limited intellectual property rights.
Amazon’s Brand Registry
Amazon’s Brand Registry is designed to promote and protect its qualifying sellers. To qualify, Amazon requires sellers to satisfy the following eligibility requirements:
- The seller must have an active trademark registration or pending application filed in each country they wish to enroll. World Intellectual Property Organization (WIPO) and European Union Intellectual Property Office (EUIPO) registered marks also qualify in their respective jurisdictions. Sellers with pending applications must file through Amazon IP accelerator (see below).
- The registered or applied-for trademark must be a word mark, such as “AMAZON,” or a design/logo.
- The brand registry trademark text must match the brand name on the application. For design marks, the seller must upload an image that exactly matches the trademark record.
- The registered or applied-for trademark must appear on the seller’s products or product packaging.
- The seller must provide a list of product categories for which the brand should be listed.
More information on eligibility requirements may be found here.
Sellers who meet the eligibility requirements may sign into Amazon’s Brand Registry using their existing seller credentials and complete an application to enroll their brand. Amazon requires all Brand Registry applications to be submitted by the trademark owner, who must supply all information necessary to prove compliance with the eligibility requirements.
In order to for you to comply as a seller, you need to have your trademark registration number or application serial number and ensure that your Amazon Brand Registry application matches the information on your trademark registration or application. For WIPO marks, you need to submit the trademark number assigned by the registrar trademark office that corresponds to the number assigned by WIPO, not the number assigned by WIPO itself. For EUIPO marks, you need to select ‘EUIPO’ as your trademark registrar in the Amazon Brand Registry application. After you have submitted all necessary trademark information, you will be able to check the status of your application by logging into the Amazon Brand Registry as an applicant and visiting your Case log.
Amazon is diligent in verifying all information that it is provided to ensure that each applicant is the rightful owner of the mark they are applying for and that the applied-for mark matches the records of the United States Patent and Trademark Office (USPTO). Amazon will send a trademark owner a verification code to return to Amazon to complete the Amazon Brand Registry enrollment process. These checks ensure that third parties are not applying to the brand registry from behind a façade of ownership of another seller’s mark. Once Amazon has verified all the information, the seller will receive access to all the benefits associated with being an Amazon Brand Registry member.
After a trademark seller has enrolled their brands in the Amazon Brand Registry, they may add additional brand representatives and agents by submitting a request to Amazon’s Brand Registry Support. Enrolled members may also add additional trademarks under the same mark name by logging into their account and clicking ‘Add additional trademarks’ under the ‘Update your brand profile’ section. Enrolled members may also enroll new or additional brands by clicking ‘Enroll a new brand’ on the home page of the account.
Amazon employs a search team and powerful search tools including text and image searching, predictive automation based on previous reports of intellectual property violations, and enhanced authority over product listings with your brand name to protect sellers with brands accepted onto Amazon’s Brand Registry.
Amazon IP Accelerator
For brands without an active trademark registration with the USPTO or foreign trademark office, Amazon allows sellers to apply for registration on the Brand Registry after filing an application with the Amazon IP Accelerator. Amazon’s IP Accelerator is a free service that connects sellers with a curated network of trusted IP professionals who can assist with trademark registration by offering services at competitive rates. Businesses who use this service are permitted access to Amazon’s brand protection services like the Brand Registry long before their federal trademark registration is issued.
To access the Amazon Brand Registry through the IP Accelerator, interested sellers should file a trademark application through one of the affiliated law firms listed and showcased on the IP Accelerator website. Once Amazon has confirmed a seller has filed a trademark registration application, Amazon will invite the seller to enroll in the Amazon Brand Registry and receive the numerous member benefits.
Takedown Procedures for Infringing Marks
Trademark registration owners have an obligation to enforce their registered trademarks against infringing third parties or risk the dilution of their rights. Trademark registration owners who fail to enforce their rights may risk abandonment or cancellation of their trademark registration if they are not diligent with enforcement efforts and allow their marks to become indistinctive.
Considering the importance in enforcing and maintaining trademark rights, Amazon does not allow product listings that appear to violate other sellers’ trademark rights in any circumstance. If you believe that another seller on Amazon is listing products that infringe your registered trademark, you should report all relevant listings as infringing to Amazon. Amazon provides a simple to navigate portal for users to report all intellectual property rights violations, found here.
Brand Registry members may report infringing marks through their Brand Registry account. After logging into their account, the seller selects ‘Report a violation’ to initiate an action against the infringing party.
While the ability to report infringing parties is not limited to registered trademark owners or Brand Registry members, registration and Registry membership provide several advantages in the takedown process against infringing products. Brand Registry members may utilize other assistance of the Amazon team, who searches Amazon’s database for infringing parties. Additionally, all Registry members with a valid trademark registration are initially presumed to be the rightful owner of their brand in actions to police their rights in the mark. The party who is the recipient of a takedown procedure notice has the burden to provide any evidence refuting the presumptive claim of the Registry member and should the Registry member escalate the action to the legal system through a court filing, ownership of a registered trademark is presumed to be prima facie evidence of the registered mark’s validity and their ownership in that mark.
Consequently, listing your products for sale on Amazon exposes you to millions of third parties that could file takedown procedures against your products. As such, it is crucial for you, as a seller, to establish trademark rights in your brand to prevent takedowns of your product listings and avoid potential loss of your Brand Registry membership and interruptions to your business.
Counterfeit Products on Amazon
The sale of counterfeit goods or “knockoffs” remains a significant threat to the U.S. marketplace with handbags, apparel, watches, and footwear listed as most common products counterfeited each year. As such, it is more important than ever for trademark owners to ensure consumers can differentiate genuine products from fakes. Counterfeiting is an unfair business practice that may incur civil and criminal liability if a brand owner seeks to enforce its rights. Counterfeiting is also a federal crime in the United States that carries the potential for up to twenty years imprisonment and up to two million dollars in damages. Counterfeiting falls under the protection of the federal Lanham act and is considered trademark infringement because it occurs when a malicious third-party sells products or services under a brand owner’s trademark without that brand owner’s authorization. This dilutes the strength of the trademark, making it less distinctive, and harms the brand owner’s hard-earned goodwill and customer trust. The long term effects of counterfeits carry both economic and social costs which not only result in poor-quality goods being flooded into a marketplace, but dangerous exposure for consumers to unsafe and harmful products that are often disguised as legitimate products under trusted brands.
Historically, Amazon has been criticized for a perceived failure to take a proactive role in policing its marketplace for counterfeit goods, which caused companies like Nike and Birkenstock to abandon the platform. Results of policing actions at Amazon show that counterfeiting remains a systemic problem with roots to illegal criminal organizations. Most recently, Amazon blocked ten billion attempted counterfeit listings in 2020 and destroyed two million fake goods. Amazon has made tremendous strides in its anti-counterfeiting efforts and protecting its sellers by creating a Counterfeit Crime Unit (CCU). The CCU is a special group, including more than ten thousand employees within the Amazon corporate structure, that is responsible for working with brand owners, law enforcement, and customers worldwide to prevent the sale of counterfeit products. As members of the CCU, Amazon employees undertake investigations of these nefarious parties and will work with owners who pursue litigation to seize counterfeit goods to protect the rights owners who sell products on its platform. In some cases, Amazon has even worked with sellers to file joint lawsuits against counterfeiters (e.g., Amazon and Asmodee filed suit together against a counterfeit boardgame publisher and distributor in Amazon.com Inc. et al. v. Katz et al. (case no.: 2:21-cv-00850) in the United States District Court for the Western District of Washington).
Reporting Counterfeit Products on Amazon
Amazon strictly prohibits listing and sales of infringing and/or counterfeit products on its platform and offenders can expect to Amazon to remove suspected listings, to revoke their selling privileges, to withhold their funds, and even to destroy or otherwise dispose of their inventory. Sellers on Amazon can self-report counterfeit products when they become aware of the illicit activity. These sellers can notify Amazon of the counterfeit products using Amazon’s Intellectual Property Infringement Report page and filling out an Intellectual Property Infringement Report form that can be found here. Members of Amazon’s Brand Registry may also submit reports regarding counterfeit items using Amazon’s ‘Report a Violation’ page found here.
To submit a report, the reporting party will be required to state whether they are the rights owner or an agent acting on the owner’s behalf. The report requires the filing party to provide information about the product that is being violated, as well as details about the counterfeit product.
After the counterfeit product report is filed, Amazon will review the complaint and respond within 1-3 business days. While counterfeiting and piracy remain a global issue, fewer than 0.01% of all products sold on Amazon receive counterfeit complaints and Amazon is very proactive about addressing each complaint, frequently acting against bad actors to protect its sellers and customers from fraud.
Ready to Protect Your Brand? Consult an Experienced Trademark Attorney Today
Maintaining a successful brand is vital to the long-term success of all businesses. Consulting with an experienced intellectual property attorney early in the process can help you better navigate the many complex issues associated with trademark rights. Developing a proactive trademark strategy is the best way to ensure the protection of your rights and continued access to the branding you have worked hard to establish. The most common mistake we see with Amazon sellers is that they failed to register their trademarks in a timely manner, leaving them at risk of losing their rights in the mark or facing a costly litigation battle.
The Rapacke Law Group understands the challenges of growing a business while protecting its most valuable intellectual property. We employ trademark prosecutors trained to successfully register your trademarks. We are so confident in our abilities to protect your brand to assist that we guarantee to provide a money-back guarantee should your mark not register. If you have questions on what type of intellectual property protections are best for your business, schedule a free consultation with one of our attorneys or take our intellectual property quiz here.
