By Lyle Gravatt
Amazon retails products supplied directly through manufacturers, serves as another virtual storefront for some major retailers, and in a clever turn aimed at competitors like Ebay, provides a retail portal for agent resellers. It’s this last category that can be problematic for Amazon, manufacturers, and most of all, consumers, as some of these resellers are actually not resellers at all, but rather counterfeiters selling fake replicas of real products.
As Amazon continues to build dominance, if not outright takeover, in almost every product sector, the company has realized that manufacturers need greater protection from counterfeiters—protecting its marketplace, or at least making a better effort to do so, will go some way to preserving the site’s preeminence. Amazon’s latest and greatest effort, launched this past summer, is its Brand Registry.
The new Amazon Brand Registry’s stated purpose is to help manufacturers “protect your registered trademarks on Amazon and create an accurate and trusted experience for customers.” The updated Brand Registry is a great way for online retailers to exert control over their products and listings by restricting unauthorized changes to text and images displaying the retailer’s trademarks and facilitating removal of infringing or counterfeit products. Even if a retailer enrolled in the prior Brand Registry before April 30, 2017, they are encouraged to re-enroll to take advantage of the updated Registry features, as re-enrollment is not automatic.
What is required? Most importantly, you must have a fully registered trademark exactly matching the brand name; logo and design marks that do not contain text components are currently not being accepted. Further, Amazon requires an image of the product and/or product packaging displaying the exact brand trademark. For some retailers, this may be an additional expense if product or packaging needs some redesign.
Less burdensome requirements include a link to the owner’s website displaying the brand and unique product identifier for each product being listed. The product identifier may be a UPC, manufacturer part number, catalog product number, model number or some other unique combination of letters and numbers. Lastly, a list of product categories (e.g., apparel, sporting goods, electronics) and countries where the products are being manufactured and distributed must be provided.
Benefits. The “Report a Violation” link is a powerful tool which acts in a similar manner to Google’s Reverse Image Search. Brand owners who have registered their trademarks with Amazon’s Brand Registry can use this link to search for unauthorized users and quickly report them to Amazon. The ability to protect and lock brand pages from unwanted edits is also provided – registered brand owners will have exclusive power to accept or reject changes. While resellers and third parties cannot register a brand’s trademark with Amazon, the owner has the ability to grant permission to others to use the registered marks, and even accept or reject changes to page listings, if desired.
Next Steps. If the protections provided by the Amazon Brand Registry are important to you or your brand, filing a trademark application is now a necessary first step. Before filing for trademark protection, a discussion with an attorney may be pertinent to determine whether your mark may be considered “descriptive”. Further, research should be performed to minimize the chance that “confusingly similar marks” will slow down or prevent your trademark from being registered.
Once filed, registration of a trademark application typically takes about 9 months. And while a trademark application can be filed before your mark is actually being used commercially, proof of use in interstate commerce will need to be submitted before the trademark application registers. Meanwhile, while your trademark application is being reviewed by the USPTO, the remaining requirements of the Brand Registry can be addressed – websites can be tweaked, products and product packaging can be redesigned, and unique product identifiers can be organized.
While the benefits of the Brand Registry are useful, Amazon clearly states that the burden of policing a registered trademark still rests on the shoulders of the owner. Keeping a vigilant eye towards unauthorized users and copycats is the best protection from a registered mark becoming diluted or weakened. don’t be fooled that the Amazon Brand Registry offers full legal protection from trademark infringement.