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 fast shipping, and Amazon takes a commission from each sale.
Producers, however, want Amazon to protect them against trademark infringement. Sellers on the site could be passing off a brand as their own, counterfeiting products, or hijacking listings. Amazon has a solution, which is the Amazon Brand Registry – a database which links specific brands to particular sellers.
In the past, sellers would register their brand with Amazon and get a host of protections in return, but Amazon recently changed the rules of the service to make it more robust. If a seller wants to get onto the brand registry today, they must have a “federally-registered trademark.” Sellers can no longer claim to be the first brand on Amazon; they must prove to Amazon that they have registered their brand with the USPTO.
The Amazon Brand Registry recognizes brands from trademark owners in the following countries and economic areas:
- United States
- United Kingdom
- European Union
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.
Amazon is keen to get sellers to sign up to the platform as soon as possible. It’s asking those without a federally registered brand name to begin the process now to reduce the incidence of property rights violations and enable sellers to represent their brands accurately on Amazon’s marketplace.
Why Does Amazon Now Require That Sellers Have A Trademark Registration To Get Onto The Amazon Brand Registry?
Amazon’s brand registry previously contained some brands that were not registered trademarks, and those sellers could claim unauthorized use by another third-party seller and Amazon would need to determine if there was a legal basis to remove the listing. Amazon updated its policy so that it could focus its efforts on protecting sellers who have a registered trademark. Amazon relies on trademark registration with an official government body for verification and vetting.
Trademark registration by the US Patent and Trademark Office is only issued after an examining attorney reviews an application to ensure it meets certain legal requirements. Relying on the various countries’ trademark offices largely relieves Amazon of the responsibility of acting as a kind of arbitrator and allows the company to focus on policing its marketplace for infringement. The new system means that Amazon can be more focused on protecting sellers with registered trademarks.
Does It Take A Long Time To Register A Trademark And Get On The Amazon Brand Registry?
If you want to get your brand on the Amazon Brand Registry, you now have to go through the formal trademark registration process. The process can take a considerable amount of time – at least nine months from submission to issuance of a trademark registration certificate.
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 register 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, therefore, 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 and to ensure that a prior registration of the same or a similar mark does not exist. Examination typically takes 3-4 months.
Once approved by the attorney, the application then enters the opposition phase, when 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.
Is There Any Way Of Speeding Up The Process?
Nine months is a long time to wait, especially if you are currently embroiled in a trademark dispute with a seller on the platform. You want official registration as quickly as possible to receive the full support Amazon offers.
The good news is that you may be able to file something called a “Petition to Make Special” to the director of the Trademark and Patent Office. This petition reduces the amount of time that you’re in stage one of the application – the part where you are waiting for review by an examining attorney. Typically, the wait is three months, but you may be able to reduce this to a month or less.
To receive priority from the director, you need to be currently dealing with infringement of some kind. For example, an unauthorized Amazon seller making themselves wealthy by illegally using your brand. You’ll also have to pay a fee to bring your application to the top of the pile for review.
But note that the second and third stages of your application, an examination by an attorney and the third party opposition period, will not be accelerated. Thus, there is still an urgency to file an application as soon as possible.
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. 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, with or without a Petition to Make Special. Many sellers, therefore, choose the services of legal professionals to maximize the chances of passing the examination and to minimize exposure to third party opposition.
Do You Need To Re-Enroll if You Already Have An Account?
Yes, if you signed up to Amazon Brand Registry before April 30, 2017. Amazon is standardizing its brand registry process. It wants all third-party sellers using the platform to have a registered trademark.
How To Register Your Trademark
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, which will cause months of delay before your brand is approved for a spot on the Amazon Brand Registry.
Here are the recommended steps to take when applying for trademark registration:
Step 1: Check if Your Mark is Already Registered or Already in Use Without Registration
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, but only a proper search can confirm that. Somebody may have already registered it. What’s more, continuing to use a trademark that is already owned may subject you to civil liability, including paying your profits from using the brand.
You will be surprised just how many trademarks are already registered. Over the years, millions of entrepreneurs and business owners have registered trademarks.
Because similar but not identical marks can be infringing, and prevent registration, a search by a trademark professional is recommended. You could be liable for trademark infringement for using a mark that is similar in meaning, sound, sight or “commercial impression” to another registered brand already operating in the marketplace. A well-performed search of the US Patent and Trademark registry which reveals a pre-existing registration that will result in rejection can save months of time.
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
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, because such changes may affect your legal rights in substantive ways. There are strict deadlines for responding to correspondence, including rejections, from the Examining Attorney. Accordingly, it may be beneficial to have an attorney monitor the examination process and respond when appropriate.
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.
Step 4: Apply For Amazon Brand Registry
If you complete the trademark registration process successfully, the USPTO will send you a trademark certificate and issue a registration number. You will use the registration number to apply for the Amazon Brand Registry. Amazon provides a helpful portal where you can submit all the required information online. Amazon will likely review the trademark registration.
You need the following information to apply for the Amazon Brand Registry:
- Your US Trademark Registration 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 will send 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 registration and begin enjoying all of the benefits that the Amazon Brand Registry brings.
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 Hartmans 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.