Amazon resellers are fueling growth at Pearson Strategy as they navigate Amazon’s rules and try to avoid sudden takedown notices. Often, we work with attorney Andrew Eisenberg, who provides legal advice in numerous IP areas, including advising resellers.
Seasoned resellers seek out our expertise in conducting patent and trademark due diligence not only to try to avoid the usual legal entanglements, but to get help avoiding Amazon takedown notices. These takedowns present a thorny problem for Amazon sellers as they often occur without warning. They immediately freeze sales, lock inventory and make purchase order problems. Too often our newest clients arrive AFTER the takedown notice.
Fortunately, Andrew provides sound advice to Amazon’s resellers on minimizing these problems in the future. Andrew is a partner and intellectual property attorney at the Austin office of Lee & Hayes, PLLC. Pearson conducts due diligence, but we do not provide legal advice.
I hope you enjoy Andrew’s insight about the latest in the Amazon reselling world as much as I do.
How to Leverage the Amazon Brand Registry
By Andrew Eisenberg
Partner and Patent Attorney at Lee & Hayes in Austin
As many of you know, Amazon’s IP policies can be difficult to work with and recently have been far too one-sided in favor of the alleged rights holder. Up to now, it’s been too easy to disrupt sales using an unjustified IP ownership claim. Fortunately, Amazon is making a move in the right direction with the Amazon Brand Registry system.
For those of you don’t know what it is, Amazon has provided a way to register your trademarks directly within their system. Being in the Brand Registry helps protect your brand and prevents illegitimate claims (at least for trademarks). Knowledge of the program has led many of my clients to quickly decide to file a trademark.
However, there seem to be some key misunderstandings on how both the Amazon Brand Registry and US Trademarks work.
How to Get into the Amazon Brand Registry
Placement in the official Amazon Brand Registry has many benefits. But, if you’re not careful, it can be complicated and cause headaches, as it has for many sellers.
According to Amazon’s own definition, “the Brand Registry helps you protect your registered trademarks on Amazon and create an accurate and trusted experience for customers.”
Enrollment in Amazon Brand Registry provides some marketing advantages such as proprietary text and image search. Not to mention the added consumer trust of a verified symbol, which may lead to more sales.
But the key feature for many sellers is “increased authority over product listings with your brand name.” Essentially, Registry members have more power to take down any sales listings they believe to be infringing on intellectual property rights. Brand Registry members can call out other brands and get their listings taken down indefinitely.
If you want to take advantage of these benefits as an Amazon seller, there are some things you need to be aware of. Specifically, you need to consider what and how to trademark your brand or product.
Trademark Application v. Trademark Registration
The most common misunderstanding is that to participate in the Amazon Brand Registry system, you must have a registered trademark, not a trademark application. This means if you do not already have a trademark, then we do need to apply for one. You will not be able to apply for Amazon Brand Registry until the application is accepted as a registered trademark.
Unfortunately, the application process for a trademark can take anywhere from 9 to 18 months. Imagine waiting in line at an enormous DMV or Secretary of State. Your application will likely sit in a queue for 3 months before it is even assigned to an examiner. From there, the process (on the “fast track”) takes about another 6 months.
The takeaway here is that if you’re going to release a new product on amazon.com, you need to file the trademark 6-9 months in advance of the launch. The Amazon Brand Registry application can be submitted soon after. If you have an existing brand, we should file the application ASAP if you want to participate in the brand registry program.
Stylized Design v. Word Mark
Another point to keep in mind is that Amazon is currently only accepting “standard character marks” or stylized designs including characters. In general, the United States Patent and Trademark Office recognizes two primary types of trademarks: word marks (the character mark) and stylized design (the graphic marks).
At this time, the only marks eligible for Amazon Brand Registry are those that have characters. They may be either word marks or stylized design. For the most part, the word mark is typically a company’s first trademark application. So, no problem there.
However, in some situations outside of the Amazon Brand Registry, it may be more advantageous for a company to file a logo mark that doesn’t contain characters or that doesn’t match their “word mark.” For example, when choosing what to trademark on a limited budget, companies that are very active on social media may select a logo or icon that they use to represent their brand, as the logo is seen more often by consumers than the name of the company.
Principal vs. Supplemental Registration
Here in the USA we have a supplemental registration and a principal registration. Supplemental is used for those marks that the USPTO is hesitant to grant full rights to immediately. Prior to the release of Amazon’s Brand Registry program, there was little downside to being placed on the supplemental registration.
In many cases, the applied for mark may be close to the name of the goods or even use the actual name of the goods in the mark. In general, the government does not want to grant you sole rights to use the name of a good when selling those goods.
Take, for example, a company that wants to call itself World’s Best Salt and sell – you guessed it – salt. Let’s assume that World’s Best Salt applied for a trademark on their name. In this example, the UPSTO would probably grant the mark.
World’s Best Salt didn’t apply for just the word “salt”, which would not be granted. The additional content of the mark, the words “World’s Best” sound like a description of quality. So, since the government doesn’t want to restrict your ability to creatively market, the USPTO would allow the mark to be granted, but only to the supplemental registry.
In this case, the allowance is really just an example of the government hedging its bets. They are recognizing they are not the experts, as a mark on the supplemental registry may be cancelled by the competition anytime within a period of 5 years. The idea is, if your competitors don’t object to your ownership of the mark within 5 years, then the mark is not seen as a problem to any players in that market.
Prior to the world of Amazon’s Brand Registry, World’s Best Salt would simply accept their place on the supplemental registry, then move to the primary registry after the 5-year period. The wait wouldn’t be an issue, as competitors could still say they sold salt, regardless of the World’s Best Salt mark. Thus, it would be unlikely that anyone would make the financial investment to fight the World’s Best Salt mark with the UPSTO.
At the same time, most of the world would simply understand that World’s Best Salt owned their trademark, which is the whole point of the mark. Now that the Brand Registry provides added marketing tools and advantages for those with principal trademarks, waiting 5 years to access them may not be a good option.
Unfortunately, predicting whether a mark will end up on the principal or the supplemental registry is often difficult. Of course, there are some clear-cut cases, but many more that are not. The fact is, the examiners tend to err on the side of caution. Therefore, to avoid inadvertently creating a marketplace advantage or monopoly, they place any marks within a shadow of a doubt on the supplemental registry.
From a consumer perspective, the USPTO’s conservative nature is a good thing. From a company’s perspective, though, it can be very frustrating, particularly when the trademark was only filed to access the Brand Registry program. The only real way to avoid this issue completely is to use a made-up term or word as your brand, if you haven’t already invested in it.
Federal vs. State Marks
If Brand Registry is your goal, then you should seek a federal trademark. In general, a federal mark is much preferable to a state mark anyway. The federal mark gives you protection throughout the United States, while the state mark grants rights only within the applied for state.
In today’s world, with the prevalence of online sales platforms, and services that can be delivered remotely, it’s far less common for any company to do business in just one or even a few states. While the federal mark is slightly more expensive and time-consuming than a state mark, the cost is far less than applying in all 50 states. Plus, the additional expense is well worth the long-term benefits and expanded coverage.
The Country of Registration Matters
The majority of trademarks within the Brand Registry were filed in the U.S. However, acceptable word marks include those that have been registered in several countries – including United States, Canada, Mexico, Japan, India, France, Germany, Italy Spain, the UK, and the European Union.
It’s possible that the “jurisdiction” of your word mark could be changed to work in your favor, as there are several countries whose word marks are acceptable for the Amazon Brand Registry. Therefore, you might want to use another country such as Mexico, Britain, Japan, etc. to get into the registry if you run into problems in the US.
Let’s go back to the “World’s Best Salt” example. The combination of letters S-A-L-T and the sound they make does not stand for “salt” in Japanese. It’s very possible that the word and sound “salt” doesn’t mean anything at all in Japanese. So, you might have an easier time getting World’s Best Salt into Japan’s “principal” registry, and then using that trademark to get into the Amazon Brand Registry.
Advice for New Brands
Of course, as a seller in such a competitive marketplace, you don’t want your listings to be removed. In fact, the main reason people are on the Brand Registry is to protect their listings. With that being said, there are some things to keep in mind:
Go Federal – Amazon will not accept state trademarks. You must apply to register with a federal wordmark.
Get Creative – To increase your chances of getting on the principal registry for a wordmark, you’ll probably need to make up a new word that means nothing, or combine words that mean nothing. You’ll need to be creative if you don’t want to be placed on the supplemental registry.
Consider some of the most brilliant and lasting brand and product names, all of which had no prior meaning at all: Google, IKEA, Sony, InVue, Accenture, Travelocity, etc.
If you’re clever, you might even be able to get away with something like Apple computers did. The company could trademark Apple because in electronics, “apple” is not a generic word. In its brand use, Apple refers to something completely unrelated to its use in everyday English.
On the other hand, unless you become a giant like Apple, your name could just be confusing and tough to Google.