The Amazon marketplace is more than a platform for Amazon to sell goods. It’s also a place where third-party retailers can sell their products to the e-commerce giant’s captive audience. The system works well. Sellers get access to a broad audience for their products, and fulfilment of orders. Amazon takes a commission from each sale. Amazon also gives sellers practical tools, including the Amazon Brand Registry.
Sellers need Amazon to protect them against trademark infringement. Infringers could be passing off a brand as their own, selling counterfeit products, or hijacking listings. Amazon has a solution, which is the Amazon Brand Registry. The Amazon Brand Registry includes a collection of tools to help you protect your brand and goodwill on the Amazon platform.
The benefits of the Amazon Brand Registry are considerable. Members get access to powerful predictive automation technology based on reports of suspected intellectual property infringement, and proprietary text and image search tools to seek out unauthorized use. The platform makes it easy for owners of brands to find bad actors on the platform and remove infringing listings.
What Are the Amazon Brand Registry Requirements?
First Requirement – Registration or Grant of Protection by Government Office (or Simply a Pending Application with the US Trademark Office)
The first requirement for Amazon Brand Registry enrollment is that the seller must have a registered trademark. Amazon also accepts pending applications in some countries, including the United States.
The Amazon Brand Registry recognizes brands from trademark registrations issued by the following government trademark offices:
United States, Brazil, Australia, France, Germany, Italy, Turkey, Singapore, Spain, Netherlands, Saudi Arabia, Egypt, Sweden, Poland, United Arab Emirates, United Kingdom, European Union, Canada, Mexico, India, and Japan
Second Requirement – Trademark Contains Text
The second requirement is that the trademark must be either text-based or if image-based, include words, letters, or numbers. In other words, logos are eligible, but only if it includes words, letters, or numbers.
Third Requirement – Use of the Brand on Products or Packaging
The Seller must show that the active registered trademark appears on the products or packaging.
Applying for Amazon Brand Registry Enrollment
If you own a pending and registered US trademark, you may use either the application serial number or the registration number to enroll in the Amazon Brand Registry. Amazon provides a helpful portal where you can submit all the required information online.
Use this link to access the Amazon Brand Registry enrollment page: Amazon Brand Registry Enrollment
You need the following information to apply for the Amazon Brand Registry:
- Your US Trademark Registration Number or US Trademark Application Serial Number
- Pictures of any products and packaging which carry your mark
- The product categories in which Amazon should include your brand
- The countries in which you manufacture and distribute your products
Amazon emails a confirmation code to the person identified as the correspondent with the US Patent and Trademark Office. If an attorney is listed as the application’s correspondent, the attorney will forward you the code to complete enrollment.
Does it Take Long to Register a Trademark and Enroll in the Amazon Brand Registry?
Although trademark registration with the US Patent and Trademark Office can take 9-12 months, simply applying for registration may be sufficient for Amazon Brand Registry enrollment. The trademark application process is first come, first serve. So an early trademark application has the added benefit of obtaining priority over later applications.
The first step in the process is to file your application for trademark registration with an official trademarking body. In the US, in order to be on the Amazon Brand Registry, sellers must apply to register their trademark with the federal United States Trademark and Patent Office. The date you file your application is critical. If you are the first to file an application for a particular trademark, then everyone who submits after you must wait in line. Getting in early is quite important.
The next step is for an examining attorney to review your application. The purpose of the review is to check that your application meets various legal requirements. The trademark office will ensure that a prior registration of the same or a similar mark does not exist. Examination typically takes six (6) months.
Once approved by the trademark office, the application then enters the opposition period. During the opposition period, others can oppose your trademark application on legal grounds. If no third-parties oppose your trademark application during the 30 day opposition period, a registration will be issued within 8-10 weeks of the publication period.
How to Register Your Trademark with a Government Trademark Office
Registering your trademark with the US Patent and Trademark Office involves more than submitting your mark and identifying the type of goods sold using the mark. The decisions you make today determine the protections you receive. What may seem trivial can lead to enormously different outcomes. Not meeting the legal requirements can result in rejection by the examining attorney. Initial rejection may cause months of delay before your brand is eligible for Amazon Brand Registry enrollment.
Here are the recommended steps to take when applying for trademark registration:
Step 1: Check if Your Trademark is Available
The first step is to find out whether the mark is in use or registered in the target market. You may think that you have an original brand. Only a proper search can confirm that. Somebody may have already registered it.
Unavailability because of a prior registration for a similar trademark is a leading cause of rejection of trademark applications. You will be surprised just how many trademarks are already registered. A well-performed search of the US Patent and Trademark registry which reveals a pre-existing registration that will result in rejection can save a year of time.
Continuing to use a trademark that is already owned may subject you to civil liability. Civil liability may include paying profits from improper use of the brand. You could be liable for trademark infringement for using a mark that is similar in meaning, sound, sight or “commercial impression” to another brand already operating in the marketplace. Because similar but not identical marks can be infringing a search by a trademark professional is recommended.
A search for unregistered marks using a consumer internet search engine is also insufficient to clear a mark for use. Search engines are designed to provide results that you will find useful. They rank popular pages highest. A brand that is in use, but not popular, may not be in the search results but nonetheless have superior trademark rights.
Step 2: Draft and File a Trademark Application
Another common cause of rejection of trademark applications is the applicant’s lack of proper use of the trademark. You will be required to submit proof of how you are using the trademark. The US Patent and Trademark Office has detailed rules regarding proper use of your trademark.
The trademark application must specify the goods and/or services for which the trademark is used. The goods should match what are sold on Amazon. The goods and services identified in the application must also match the evidence of proof of use.
When it comes to getting your brand on the Amazon Brand Registry, Amazon imposes high standards. Having trademark registration is a necessary condition for getting on the Amazon register, but it’s not sufficient. The registration of your trademark needs to match the mark on Amazon exactly for the company to accept it. If there’s a discrepancy, Amazon will deny access to the register, along with all the protection it brings.
Step 3: Monitor Examination and Opposition
It is typical for the Examining Attorney to request minor changes or to reject the application altogether. The Examining Attorney is not permitted to provide legal advice about changes to the application that can overcome the basis for rejection. Such changes may affect your legal rights in substantive ways. There are strict deadlines for responding to correspondence, including rejections, from the Examining Attorney. It may be beneficial to have an attorney monitor the examination process and timely respond to the USPTO.
If the application is opposed by a third-party, a Trademark Trial and Appeals Board (“Board”) action is initiated and you will have a short amount of time to file a formal answer with the Board. In some cases, a resolution can be obtained by entering an agreement with the third-party opposer.
What Happens If The Application Fails to Meet the Legal Requirements?
It’s also vital that you avoid mistakes on your application. The application is a legal document, and you must complete it correctly for it to pass the examination. The USPTO will reject applications that do not conform to legal standards. You may be able to satisfy the USPTO by making adjustments. In some cases, an explanation is necessary. If there are mistakes and they are discovered during examination by a US Patent and Trademark attorney, you may need to start the entire application process over again. Many sellers, therefore, choose the services of legal professionals to maximize the chances of passing the examination.
How You Might Benefit From Amazon Brand Registry
There are currently tens of thousands of brands in the Amazon Brand Registry, and the number rises every day. Those in the register report less infringement and unauthorized use, helping them to protect the brand that they work so hard to construct. There are also various tools which you can use to help Amazon stop the unauthorized use of your brand.
The benefits of becoming an Amazon Brand Registry member are considerable. Amazon lists the benefits as follows:
Extensive Search And Reporting Tools
Amazon wants to make it as easy as possible for registered sellers to find and eliminate trademark infringements on its platform. The company offers tools to make the process easier, including “Global Search,” which allows sellers to search for infringement efficiently.
Amazon, like Google, also provides sophisticated image search tools. Sellers can put different versions of their marks and logos into an image search and scour the Amazon platform for imitators.
Almost all Amazon sellers sell multiple products through the marketplace and have vast product portfolios. Amazon allows bulk ASIN and product URL searches, making it easier for sellers to find and identify infringements, without manually searching products one at a time.
After you’ve completed a search, Amazon provides tools which allow you to create and file a report with the company efficiently. Amazon will then investigate the matter and take action, if appropriate.
Get Amazon To Proactively Flag Brand Infringements
Amazon is proactive when it comes to protecting your intellectual property. It will flag product listings which incorrectly use your trademark in their titles. It will also flag product images which bear your logo or mark.
Finally, because Amazon collects a catalog of all your products, it can alert you when a seller lists new products using your brand or logo. This allows you to easily pinpoint and distinguish between unauthorized and authorized sellers..
Get Professional Legal Advice from a Trademark Attorney at Hartmans Law
If you have questions, schedule a consultation with a trademark lawyer at Hartmans Law, a Los Angeles based firm that practices trademark law.
Filing for Amazon Brand Registry might seem like a hassle, but the benefits program are extensive. Many active sellers experience infringement, and being proactive by getting into the brand registry will put you in a position to enforce your rights on the site with minimal effort. Waiting until unauthorized use puts you at a disadvantage, and the months of time it will take to obtain a trademark registration can result in lost profits.
If you want support and guidance throughout your trademark registration, Hartmans Law is here to help. The firm manages trademark portfolios on behalf of many active Amazon.com third-party sellers. The firm’s main telephone number is +1 (310) 954-8512.