Amazon Brand Registry and Registered Trademarks – Trademarks

Earlier this year, Amazon rolled out its Amazon Brand Registry, which is an effort to work with registered trademark owners to protect the customer experience on Amazon’s site. Since that time, as the official correspondence address on my clients’ trademark registration, I have received many requests from Amazon asking to validate and verify trademark owners for the registry. Enrollment in the Amazon Brand Registry provides trademark owners with improved tools for fighting trademark infringement.It is well known that having a listing removed or a seller flagged for trademark infringement has often been a difficult endeavor on Amazon. Common types of trademark infringement or misuse I’ve seen there include:

Someone sells their own product using your name, logo, or trademark

Someone sells their own product using a name, logo, or trademark that is similar, but not identical, to yours

Someone hijacks your listing but ships a different product

Someone improperly lodges an infringement claim against a trademark you own

Handling things like the above generally required contacting Amazon’s automated service, eventually getting through to a person, and having the listing or complaint analyzed and then potentially taken down. This process was slow and cumbersome, especially if there was infringement by multiple users. And trademark owners could find themselves in a game of whack-a-mole with listings subsequently popping up under different seller’s accounts. The Amazon Brand Registry is intended to ease and speed the process of finding and handling potentially trademark infringement on, users who are enrolled with the Amazon Brand Registry will be able to create and upload unique videos and photos that are keyed to their accounts. Misuse of that content by others is easier to find and stop. Enrollment also gives you a faster takedown process, letting you clear infringement more quickly than with the old system. Enrolled sellers have access to text searches, image searches, and automated responses to potential intellectual property infringement. Sellers who are enrolled will also appear more legitimate to prospective customers, who may opt to purchase from that seller rather than one with a cheaper price but a more questionable status.Some points and prerequisites concerning the Amazon Brand Registry:

Only owners of federally registered trademarks are eligible to participate in the Amazon Brand Registry. Common law trademarks and pending federal applications do not provide an enrollment basis.

Word marks are definitely eligible – these are sometimes known as “standard character marks” because they usually appear simply as capital letters without claim to style or font.

Composite marks appear to be eligible. Amazon says that “words, letters, or numbers in a stylized form” and “illustration drawing[s] which include[] words, letters, and/or numbers” are eligible. This seems to imply that a mark or logo having both text and graphical elements will qualify.

It appears that pure design marks – graphical elements which have no text, words, or letters – may not qualify.

You will need to provide proof of your registered trademark, as well as proof of how the mark is actually being used on the product or packaging for the product.

I’ve seen discussion that your trademark has to be registered on the Principal Register, not the Supplemental Register. I have not been able to verify this with Amazon, however.

If you are a trademark owner, consider the following for moving forward:

Registering your trademark. Registration is a fundamental requirement for enrollment now, so this action must be taken.

Filing the application for trademark registration now. This process typically takes at least 6-7 months, and Amazon’s requirement that your mark be registered means you should start the registration process sooner rather than later. The longer you wait to file, the longer it will take before you can enroll.

Registering a word mark version of your mark, if you only have a design or composite mark registered. The word mark will not only be definitely eligible for enrollment in the Amazon Brand Registry, but it typically offers the best and broadest protection for you trademark in the larger marketplace.

Does the way you use your trademark on listings, products, and packaging match the registered trademark? Different spelling, spacing, hyphenation, or other variations can limit your ability to use, or potentially even enroll, in the Amazon Brand Registry.

Failure to enroll in the Amazon Brand Registry does not mean you cannot report alleged trademark infringement on Amazon, it just means you won’t have all of Amazon’s potential tools available to you for finding and combating that infringement. Typically, clients find it difficult and cumbersome to monitor and remove trademark infringement.

If your trademark is on the Supplemental Register, consider moving it to the Principal Register. Not all marks are eligible for this and so attempting the move requires careful analysis together with a use and filing strategy.

If you were enrolled in the Amazon Brand Registry before April 2017, you will not be automatically re-enrolled. You have to manually re-enroll.

Trademark Registration Timeline – Trademarks

Trademark registration applicants should normally grant at least 12 to 18 months to register a trademark. Enrolling a mark includes your trademark application continuing through different phases of the trademark application process. A trademark lawyer can give brand help with all parts of the trademark documenting including1. Mark configuration2. Reviewing on a trademark search3. Educating you on the means to getting a trademark or the cost to enlist a trademark, all of which improves the probability that you get a trademark.The Examination Process1. The trademark legal counselor surveys the trademark application and decides if the stamp might be registered undera. United States Patent, andb. Trademark Office (USPTO)2. Ought to the USPTO trademark legal counselor choose not to register the mark, he will issue a letter clarifying the purposes of refusal.3. The applicant must react to any objection within six months, else the trademark application is esteemed surrendered.4. Registering a Trademark or trademark lawyer can help you effectively battle this underlying refusal.The most widely recognized reason for the trademark legal advisor from the USPTO to reject a trademark is the probability of confusion in the mark of the applicant and a formerly registered mark or that the mark is just expressive in connection to the applicant’s goods and services.Publication for Opposition1. The second stage for trademark registration is the publication for opposition.2. On the off chance that the USPTO trademark legal counselor raises no protests to registering a trademark, or3. If the application passes all objections, the USPTO trademark lawyer will favor the mark for production in the Official Gazette.4. The USPTO trademark lawyer will send a Notice of Publication to the applicant expressing the date of publication.5. Any gathering who trusts it might be harmed by registration of the mark has 30 days from the production date to record a request in order to extend time to oppose. In the uncommon occasion of a restriction, a procedure like a trial is held to decide if the resistance depends on substantial grounds, for example, the candidate’s mark being confusingly like the opposer’s mark. On the off chance that no opposition is documented or the restriction is unsuccessful, the trademark search application develops to a registered mark or gets a Notice of Allowance.Registration or Notice of AllowanceThe third stage of registering a trademark is the issuance of a trademark registration or Notice of Allowance. On the off chance that the trademark application was for a mark effectively utilized as a part of the business, the USPTO trademark lawyer would register the mark and issue a registration certificate by and large around four months after the date the mark was published.If the trademark documenting depended on an Intent-to-Use premise, the USPTO trademark lawyer will issue a Notice of Allowance around four months after the date of publication. The candidate at that point has a half year from the date of the Notice of Allowance to eitherUtilize the mark in business and submit a Statement of Use, orAsk for a six-month augmentation of time to record a Statement of Use. On the off chance that the Statement of Use is documented and affirmed, the USPTO trademark lawyer will issue a registration certificate.