It’s no secret that trademark registration takes time – the average application will take at least nine months to register with the United States Patent and Trademark Office. This wait is especially long when you are an Amazon seller hoping to take advantage of the new Amazon Brand Registry program that requires a U.S. trademark registration.
However, while you wait, here are some things you can do to help strengthen your brand while you wait for your trademark to register.
If you haven’t already, have a professional review your application
There are many pitfalls Amazon sellers and inexperienced attorneys fall into when trying to register a trademark with the USPTO. These errors become even more important if you are an Amazon seller waiting on the registration to join the Amazon Brand Registry. For example, did you know that Amazon will not accept your trademark registration if it is for a “design mark” (i.e. the trademark registration includes your logo). Amazon will also not accept registrations on the “supplemental register” or registrations for products that do not match what you are selling on Amazon. It makes sense to have an experienced trademark attorney review your application for potential issues, and become the attorney of record to deal with any issues quickly.
If you filed for the wrong class or the wrong goods and services, there still may be time to fix it without delaying (or worse, preventing) your trademark registration. The easiest way to prevent delays in your trademark registration is to identify the potential problems as early as possible and an experienced attorney can help spot those issues and mitigate the chance of delays or rejections.
At the very least, review your application with Amazon’s guidelines to make sure your wait hasn’t been for nothing.
If you haven’t already, hire a trademark attorney to do a comprehensive search and have a professional review your application
How confident are you that your trademark application will be approved and that no one else is using a confusingly similar trademark in the marketplace? If you filed your application yourself or through an ultra-low-cost or “do-it-yourself”-type service, there is a good chance you skipped doing a “comprehensive search” to assess the application’s risk level. An experienced trademark lawyer can flag potential issues by looking at everything that is already out there on the U.S. government database and unregistered trademarks in the marketplace. This way, if the risk level is too high, you can file a backup name as soon as possible to prevent further delays.
A comprehensive search looks at more than just exact matches – it looks at anything that is similar in sight, sound or meaning. In other words, if two trademarks share the same commercial impression for related goods and services, then the “senior” user can likely prevent the “junior” user from registering (or even using) the trademark. Knowing your risk level is important before spending thousands of dollars on custom-branded stock.
Design Your Product Packaging to Clearly Show the Brand
A trademark registration is not worth the paper it is printed on if your brand is not resonating with consumers. Review your product, product packaging, inserts, and any marketing or advertising for your product and ensure that your trademark is being used consistently and in-line with what you applied for. Always use the ™ symbol (not the ® symbol – at least not until you have a registration certificate in hand) to make sure consumers know you are claiming the word or phrase as a trademark.
Consistency is important because your trademark’s strength is derived from the connection your customers have to the mark – the trademark will represent all the good (and bad) experiences you customers have with your trademark and consistency will help them remember the trademark and make those valuable connections to your brand. Product experience does not stop at the packaging – your customer service (phone and/or e-mail) should utilize the trademark, as should social media and other marketing avenues.
Also, have a plan for the future when it comes to how the trademarks will be used. Is this brand just for one product, or is it the house brand for a line of products? Are you going to produce these products, or can you license it to someone else to create other product lines under your name? These are important questions with important legal issues attached to them, so consider them carefully while you build your brand.
Consider International Trademark Filings
Trademark rights are “territorial” meaning that, for the most part, use and registration in the United States only gives you protection in the United States. However, if your products are going to be sold overseas, you should consider protection abroad. It may even make sense to protect your trademark in the manufacturing country – sometimes, foreign governments may cease products that are being manufactured within the country for violation of a local trademark, even if that product isn’t for sale or meant for that marketplace. International filings can be expensive and time-consuming, but utilizing treaties and international protocols (like the Madrid Protocol) may save both time and money when protecting your trademark abroad.
Also consider any product lines, slogans, or other trademarks that might be in the works in order to get ahead of the game. By applying early, you can reduce wait times and reduce the chance someone else will begin using a similar trademark that could prevent you from using or registering a potential trademark.
Have a Trademark Infringement Action Plan
Just because you are not registered with the Amazon Brand Registry program doesn’t mean that you cannot enforce your trademark rights. While it is easier to get Amazon to respond to complaints when you have a registered trademark, under U.S. trademark law, unregistered trademarks are still protectable, including against sellers on Amazon.com. It is, however, more difficult.
What can you do to increase the chances of successful enforcement? Keep detailed records of everything – your sales, your advertising, your suppliers, your authorized sellers. From that data, develop a paragraph explaining the strength and reach of your brand (this is the key to proving “unregistered” trademark rights.) This should include the markets you are in, where customers are buying from, estimated sales numbers (nothing proprietary or confidential.)
You should also learn about the different types of intellectual property violations. If someone copies your listing photographs or your advertising copy, you likely have a copyright violation, not a trademark violation. If someone created a similar product with a similar name (but isn’t pretending to be your company) then it is likely a trademark issue. If a seller selling a generic or counterfeit product, then it is likely a trademark counterfeiting issue. Knowing the difference can help save time and money when needing to enforce your rights.
When the Wait is Finally Over
You’ve waited for nine months and finally were issued your registration certificate. You registered a trademark, and now it’s time to register with Amazon’s Brand Registry, but also consider registering with the U.S. Customs office. You also need to set up a system to monitor the marketplace for infringement to diligently protect your rights.
When protecting a trademark, trademark registration is just the beginning. A trademark is an asset that is “living” – its strength and value depends on customers’ connections to your company and can be damaged by third-party use. If you end up needing an attorney, the experienced trademark attorneys at Gerben IP provide free consultations for your trademark issues – click here to contact us.