As of November 2020, Amazon has loosened its requirements for getting onto the Amazon Brand Registry. Instead of requiring sellers to have a federal trademark registration, Amazon only requires a federal trademark application to have been filed on a brand name in order to qualify for the Amazon Brand Registry.
Because of its popularity, trademark infringers, product counterfeiters, listing hijackers and others continue to be a major problem throughout the Amazon marketplace. Recently, Amazon rolled out their latest version of the Amazon Brand Registry, a registry only available to federally registered trademark owners in the United States, Canada, Mexico, India, Japan, France, Germany, Italy, Spain, the United Kingdom, and the European Union.
According to Amazon, the Amazon Brand Registry:
[P]rovides access to powerful tools including proprietary text and image search, predictive automation based on your reports of suspected intellectual property rights violations, and increased authority over product listings with your brand name.
Amazon encourages sellers to “enroll now so your brand and Amazon can work together to reduce potential intellectual property rights violations and promote an accurate representation of your brand on Amazon.”
This articles explores the issues Amazon sellers need to know, such as:
- Why Amazon’s Current Brand Registry Requirements Will Likely Change Soon
- How Long Does It Take To Register a Trademark in the United States?
- How Do I Register My Trademarks?
- New Amazon Brand Registry Trademark Requirements for Existing Amazon Sellers
- How to Start Your Trademark Filing Now
Amazon works with hundreds of thousands of different brands as one of the largest online retailers in the United States. As a result, it gets thousands of complaints every day from sellers regarding counterfeits, infringement, and other legal issues. For its Brand Registry, Amazon is currently requiring only a trademark application be filed (as opposed to having a registered trademark in-hand). This policy is likely to be exploited by counterfeiters and other fraudulent sellers on Amazon’s platform. As soon as Amazon and the public discover the fraud that is likely to run rampant under the new policy, we expect Amazon to go back to requiring a trademark be registered to gain access to a program such as the brand registry.
This is because a trademark registration is awarded only after a government attorney (called an “examining attorney”) reviews the application and the information provided. It takes a lot of effort to be awarded a trademark registration by the USPTO. It is a process that will weed out many counterfeiters and fraud artists.
It will take at least nine months from start to finish to obtain a trademark registration.
The most important date (for trademark registration) is the date you file the application. Everyone else who files for a similar trademark after you will have to wait in line behind you. Once filed, a trademark application waits about three months before a government attorney (called an Examining Attorney) reviews the application. If approved, then the government will publish the application “for opposition” in about three months. If no one opposes the trademark application, it will register in an additional three months.
There is one exception to this “nine month” rule – you may be able to file a “Petition to Make Special,” which is a petition to the Director of the USPTO’s office asking them to expedite the initial review of the trademark. There is additional costs and will only reduce the “first stage” shown above – the time it takes for a government attorney to review the application, likely reducing the processing time by about two months. To take advantage of this, you must be actively dealing with infringers – the USPTO will not grant a Petition to Make Special solely because you want to register on the Amazon Brand Registry.
Once you’ve decided to file an application, it is crucial that you do the registration process correctly. In some circumstances, if you make mistakes on your application, you will have no choice but to re-file and start from scratch.
Trademark registration is more than just filling out a form. Despite what many “do-it-yourself” services and ultra-low-cost attorney services may claim, there are dozens and dozens of legal decisions being made, all of which could have a huge impact on your trademark rights. Even small errors can mean months of delays in the registration of your brand with the Amazon Brand Registry and can hurt your trademark rights.
Here are the recommended steps to register a trademark:
Step 1: Trademark Search and Clearance
Every trademark owner needs to know what is already being used in the marketplace. Without having an experienced professional perform a comprehensive search, a trademark owner may be opening him or herself up to a significant amount of liability. You may apply for a trademark and find that there is already a competitor using a similar trademark. You may obtain the registration, only to find out that someone else in the marketplace has been using it longer. Both of these scenarios can lead to the denial of your trademark registration and potentially a demand that you stop using the trademark completely.
A comprehensive trademark search will look at everything that is already registered with United States Patent and Trademark Office or used in the marketplace to determine whether someone else is already using a trademark that is similar in sight, sound, meaning, or overall commercial impression.
Step 2: Drafting the Application
This step is crucial, especially for Amazon’s Brand Registry. If you incorrectly draft the application, even if you successfully obtain a trademark registration, Amazon may still deny your application for the Brand Registry.
Amazon now accepts both word marks and logo, but the written portions of the trademark should match the trademark the seller is using on Amazon exactly for the same goods and services being sold on Amazon.
Step 3: Prosecuting the Application
Once the application is drafted and submitted, it will take at least nine months (see above) to obtain a registration. At various stages, the USPTO may need responses to inquiries or other concerns that require your attention. If you miss a deadline and allow the application to abandon, then you could risk having to re-file the entire application.
Step 4: Signing Up for the Amazon Brand Registry
Once the trademark application registers, you will be sent a trademark registration certificate and will be issued a trademark registration number. Your certificate will appear online at tsdr.uspto.gov (using your serial number to look it up.) You can then submit your information to Amazon through the online portal here. Amazon will require the following information:
- Your full trademark (as it appears on the product or product packaging – it must match how the trademark appears on your trademark registration)
- Your U.S. Trademark Registration Number
- Confirmation that this is a “word mark” (not a logo)
- Images of any logos using the trademark
- Images of products and packaging that carry the trademark
- A list of product categories (e.g., apparel, sporting goods, electronics) in which the brand should be listed.
- A list of countries where the brand’s products are manufactured and distributed.
Amazon will then send us, your attorneys of record, a confirmation code. We will promptly send you the confirmation code to complete the registration for the Brand Registry.
If you signed up for the Amazon Brand Registry before April 30, 2017, you will need to re-enroll in the new Amazon Brand Registry program with a registered trademark.
The Amazon Brand Registry is an exciting new program and another great reason to register your trademarks as soon as possible. However, do-it-yourself services and ultra-low-cost filing services often do not provide the personalized experience you would get from hiring an experienced trademark attorney. There are many pitfalls and issues that can come up when drafting and filing a trademark application and having an experienced attorney to help avoid issues can be the difference between a trademark registration and a denial. Contact the experienced attorneys at Gerben Law Firm today for a free consultation.