As a seller on the Amazon marketplace, you may receive a claim of trademark infringement. Whether you sell your own goods or you’re a reseller of third-party products, you can face a claim of trademark infringement all the same. Such a claim may come through Amazon or directly to you from the claimant or an attorney.
A claim of trademark infringement is a common occurrence, but that doesn’t mean that it is something that you should take lightly. Because it is a legal issue, the way you respond to the initial notice matters. The words and tone you use could dramatically affect the outcome of the case against you. A claim of infringement could also lead to Amazon removing you from the marketplace for breaching their rules, putting your business at risk.
Other business entities can make different kinds of claims. Some claims relate to specific products or items you are selling via Amazon. The name of one of your products, for instance, may cause Amazon or a third-party to deem the listing as too similar to the name of an existing brand. Other claims can relate to the operating name of your company. For example, a claimant may feel that your brand is too similar to theirs, leading to customer confusion.
Responding to a claim of trademark infringement on the Amazon marketplace can be a stressful process. If you want to mount a robust response, it is helpful to have a good knowledge of trademark law and how it applies to your situation. A professional can help you respond to a claim of trademark infringement to ensure that your rights are respected by Amazon and other parties..
Both Amazon And Third-Party Attorneys Can Make Claims Of Trademark Infringement
As a seller operating on Amazon, claims of trademark infringement generally come from one of two sources: Amazon itself or an attorney acting on behalf of a third-party.
In the case of the third-party claim, an attorney will usually contact you directly informing you that their client believes that you have infringed their trademark. The letter will typically contain a request for you to stop using the marks and evidence for where the attorney believes you violated the law.
If you receive a notice from a third-party attorney or Amazon, you must carefully plan your next steps in order to protect your business. You need to make sure that you understand your legal ground before you continue. An attorney may be able to outline all of the options specific to your circumstances.
Making An Amazon Marketplace Infringement Counterclaim
You may be able to make a counterclaim, pointing out that the opposing party is using your brand when they shouldn’t.
If you want to make a counterclaim, you need evidence that you own the brand. Federal trademark registration is ideal proof. Federal trademark registration demonstrates that your trademark ownership has been reviewed and approved.
Even if you own a federal trademark registration, you should be careful about how you respond to a claim. Federal trademark registration is not a guarantee. The law in this area is nuanced.
What Happens If You Lose a Claim?
Amazon may take severe action if it decides your use of a mark is unauthorized and improper. In general, there are two possibilities: the removal of offending products from your storefront, or removal of your entire account.
If you have never received a claim of trademark infringement on the Amazon marketplace before, Amazon may only remove the offending product. Amazon may take a favorable view of the situation if it believes that the offense was a one-off or the result of an error.
Amazon may remove the entire account if multiple successful claims of trademark infringement have been made in the past. Ultimately, the details of the specific case will determine the outcome.
Can Amazon Suspend Your Seller Account Without A History Of Trademark Infringements?
Amazon may suspend your seller account even if you do not have have a history of individual product trademark infringements. You may have to change your branding/logos/marks before the company reinstates your storefront.
Get Support Choosing Suitable Trademarks for Registration
Amazon Brand Registry makes it easy for sellers and manufacturers to search for improper use of their branding. (LINK to Amazon’s Brand Registry.) Owners of brands in the Registry get access to powerful image search tools and proactive checking on the part of Amazon to weed out anything that is similar in form and substance to their brands. A brand’s likeness may lead to the issuance of a claim against you, even if you operate in a different industry.
Sensible Amazon sellers also cut the risk of a claim against them by using the Registry. As I recently wrote about in another BLOG ARTICLE, Brand Registry requires trademark registration in one of several countries, including the US. However, trademark registration can take 9 months or more, and it may be 3-4 months before your application is reviewed by an examiner. If an examiner is going to reject your application because of a prior similar trademark registration, you may not know until that initial review is performed, 3-4 months after the application is filed. If you launch a product or storefront before the trademark is registered, you run the risk of needing to re-brand. Re-branding will cause the loss of goodwill (e.g. positive reviews), and changing marketing materials can be costly.
A thorough trademark clearance search of the USPTO database in advance of launching a product or storefront on Amazon.com can save you time and money. A simple word search of the USPTO database may be insufficient to find a pre-existing registration that an Examining Attorney would cite to reject your application. In order to recreate the Examining Attorney’s own search, care should be taken to consider similar but not identical trademarks, including those with similar sounds. A search by a trademark professional can help you clear your mark for use and registration, saving time and the cost of rebranding.
Get Support If Amazon Shuts Down Your Account
If Amazon suspends your account following a successful trademark infringement claim which you believe was not supported, contact Hartmans Law to discuss.