Amazon Brand Registration and 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 then, as the official mailing address on my clients’ brand registry, I have received many requests from Amazon asking to validate and verify brand owners for registration. Enrollment in the Amazon Brand Registry gives trademark owners enhanced tools to combat 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 that I have seen there include:

• Someone sells their own product using your name, logo, or trademark
• Someone sells their own product under a name, logo, or trademark that is similar, but not identical, to yours.
• Someone hijacks your listing but ships a different product
• Someone improperly files an infringement claim against a trademark you 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 violation by multiple users. And trademark owners could find themselves in a game of whack-a-mole with listings subsequently appearing on different sellers’ accounts. Amazon Brand Registry is intended to make it easier and faster to find and handle potential trademark infringement 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 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 under the old system. Registered sellers have access to text searches, image searches, and automated responses to potential intellectual property violations. Sellers who are enrolled will also appear more legitimate to potential customers, who may choose to buy from that seller instead of one with a lower price but more questionable status.

Some points and prerequisites regarding 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 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 claimed style or font.
• Composite marks appear to be eligible. Amazon says “words, letters, or numbers in stylized form” and “illustration drawing[s] what includes[] words, letters, and/or numbers.” This seems to imply that you will rate a brand 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 brand 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 registered trademark owner, consider the following moving forward:

• Registration of your brand. Registration is a critical requirement for Enroll 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 brand be registered means you need to 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 wordmark version of your mark, if you only have a design or composite mark registered. Not only will the word mark definitely be eligible for enrollment in the Amazon Brand Registry, but it typically 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 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 doesn’t mean you can’t report alleged trademark infringement on Amazon, it just means you won’t have all of Amazon’s potential tools at your disposal to find and fight that infringement. Typically, customers find it difficult and cumbersome to monitor and remove trademark infringements.
• If your trademark is on the Supplemental Register, consider moving it to the Primary Register. Not all brands are eligible for this, so attempting the move requires careful analysis along with a use and archive strategy.
• If you enrolled in Amazon Brand Registry prior to April 2017, you will not be automatically re-enrolled. You have to re-enroll manually.