Amazon Brand Registry And Trademark Protection with Jason Webb

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Hey there, product launchers. Happy to have you back for another office hours. This one's going to be with Jason Webb, our intellectual property expert on all things patent and trademark. So let's hear from Jason. Hey. So today I'm going to be talking about the Amazon's Brand Registry program from an intellectual property attorney's point of view and kind of how that works and what you can do to access it. So one of the big issues facing people who are doing any kind of commerce online is that Amazon has become just this huge monster dominating force in the market. I know that a lot of sellers really don't like Amazon. It is difficult to work with. But buyers love Amazon and that's one of the reasons why sellers aggregate towards Amazon is because buyers love it so much, it's kind of often one of the first places to get their looks if they want to go buy something. So if you want to be part of that market, then you definitely need to be part of what Amazon is doing. And Amazon has been really aggressive and really successful at doing the kinds of things that buyers want and that often makes things difficult for sellers. And one of the things that has happened is it's made it difficult for sellers to stop infringement when it's happening. Now this also happens with Alibaba, happens with ebay, happens with any kind of online aggregate retailers where you end up with lots of issues of infringement. And then of course you're going to go to the platform to try to, to solve the problem. So Amazon's brand registry is sort of a way to sort of automate that, make that easier. Frankly, I don't like issuing takedown notices to ebay and Amazon and things like that. It's definitely not one of my favorite things to do as intellectual property attorney. And so I'm definitely in favor of them building tools and creating tools that allow retailers to establish control and dominance of their intellectual property in that space, that do it in a way that the retailer can do it instead of having to have their lawyers do it. I definitely applaud them in doing this. Now, the brand registry is a very limited scope of intellectual property protection. It only applies for trademark registrations that are in certain set of Countries, United States is one of those countries. And they have a. If you go to their website that talks about the details of that and how to do it, there's a short list of countries where you, if you have a trademark registration in that country, then you can file to get your brand on the registry. Now, your brand is registered has to be either a wordmark or a stylized design of a word. And so what that means is, for example, if Nike, right, so Nike has a trademark registration for the word mark shoes, they could do that. And if they have Nike with the swoosh above it registered, they could do that. They just want to protect the swoosh. You can't, because it's not words or letters or numbers, it's just a design. And so if your brand that you have registered is just a design, you're not going to be able to register that through the brand registry. And so it really primarily needs to be something that is words, letters, numbers, things like that. Another thing that sometimes will trick people or get people tripped up is that my understanding is that Amazon does not accept brands that are on the supplemental register. And the supplemental register is sort of a place to go when your brand is too descriptive and they're not willing to put it on the primary register, principal register. And so if your trademark is registered on the supplemental register, you're not going to be able to access the brand that you see now. You actually have to have a registration. Trademark application is not sufficient. And one of the issues that will have is that they want to be registered through Amazon Registry now because they want the tools they get from that. But the problem is, is it takes months for the trademark office to even assign your application to an examiner. Plus there's whole steps in the process to get it registered. And so from the time you start, it may be 7, 8, 9 months, 12 months or even longer if you have to fight with the trademark office to get your application registered. So it may take nine months to a year to get the registration. Once you have the registration and that registration is published and you have a registration number, then you can apply for the brand registry through Amazon and you just go online, you apply. And what they'll do is they will, as you're going through the application process, they will send your attorney an email with a verification code, the verification code, and it's the attorney that's listed on the application for the trademark. That verification code is what you need to continue with the process. And so over the past year or so, I've been getting a Lot of those I've been getting just randomly, I'll get an email from Amazon and it's for one of my clients, and then I see which client it's for, and then I can go ahead and forward it to them so they can go ahead and complete that process. And it's great because it allows my clients to go ahead and have some authority and some control over what happens on Amazon with respect to their brand. Now, it hasn't been perfect. Amazon's evolving. And there are some other issues that have been in the courts recently with making it difficult to go after infringers. But I'm really hopeful that this brand registry program will be successful and that they'll expand it and grow it. It would be nice if they could expand it to more than just wordmarks. I don't know if they'll expand to more than that or not. And then also it's great if they can keep adding countries, because this is definitely a world marketplace and it would be good to be able to shut down Furnitures more than just the list that they have now. As far as the trademark process goes, just to give you kind of some background of the trademark process, what you can expect once the application is filed, it takes them about three months to assign it to an examiner. An examiner is the one who looks through the application, does some research, checks to see if you're not stepping on someone else's toes, decides whether they're going to allow it or not, if they're going to allow it, moves through the allowance process, not going to allow it. They send what's called an office action. Just explain why they're not allowing it and what the problems are. And sometimes they have suggestions for how to fix it. Sometimes those suggestions are good, sometimes they're not. But you want to make sure that you respond to that in time, because if you don't, then the application goes abandoned and can lose the whole thing. So be sure to keep on top of that. The allowance process. If you have already proven that you're using the mark in commerce, that you've got goods and services that the market is being used with, then you can go straight to publication. They publish the application and basically give everybody in the world a month to decide whether or not they want to oppose your mark before it's registered. If nobody opposes it or request an extension of time to oppose, then it moves to the registration process. And usually about a month after that is when you get the registration certificate and the registration number. If you have not proven that you're using it in commerce, now is the time to do it. You have about six months from when it's allowed to prove that you're using it in commerce. And to do that you've got to submit evidence to them that you're properly using your brand in association with the claims, goods and services. And if you can't do that or aren't ready to do that, there's extensions that can be filed. There are six month extensions and you can file up to five of those in sequence. So you can take three years to finally prove that you're using commerce. And that just allows for the realities of entrepreneurialism, which is things sometimes take longer than planned and they don't go as planned. Sometimes you have to adjust and make changes. Sometimes product development runs into sticky issues and takes time to go through those. So anyways, once you get the registration, then that's when you can access the Amazon brand registry and then have those additional powers and capabilities. I've never seen the user interface for that. I've never been involved in that. But my understanding is it allows you some easy ways to look for infringers. It also allows you some easy ways to basically put those infringers on notice that there's a problem and get those listings taken down. Amazon says that they act on most of them within about eight hours of you posting the issue. But I've heard of things not going well or things not going as planned with that. So just kind of expect what you get. One of the other issues that you want to be really careful of is using where it makes it really easy to submit something saying that a listing is fraudulent or counterfeit. It also makes it kind of easy for you to accidentally submit that your own listings are fraudulent or counterfeit. I've seen that where we've had to fix that before and that has been super hard to fix. Be really careful when you're submitting those that you don't accidentally say that your own listing is a bad listing or a counterfeit listing because once it gets delisted, you know you could have a fantastic successful listing that then you have to sort of rebuild all over again from scratch if they're not willing to re list it again. That's kind of that in a nutshell. Plan on spending anywhere from 2,500 to 3,500 to go through the trademark process, start to finish, including the research, preparing and filing the application, babysitting it through the process, proving that you're using E Commerce, government fees, things like that. There are cheaper ways to do it, but you get what you pay for. One of the difficulties with trademark law, trademark law doesn't have roots in that are the same as copyright law and patent law. Copyright law and patent law were designed to reward people who brought good things to our society. So someone writes a wonderful book, you want to protect that and make sure they get rewarded. Someone's a great artist, you want to make sure that the art that they produce they get paid for. It's not stolen from them. Someone invents something that makes their lives better, we want to reward that inventor. We want more of those kinds of inventions. Whereas for trademark law, it's not designed to protect the merchants, the sellers, it's designed to protect the consuming public. And so a lot of people, when they file their own trademark applications or when they go through cheap service, one of those cheap online services, then they make mistakes in the applications that can ruin the application. And there's only a few things that you can change. And most of the things you can change in your application can only change just a little bit. You're really limited on how much you can change it. So mistakes that you make early in the process of filing your application often can't be fixed later. And so you can waste a lot of time if you try to go cheap or try to file it yourself. You can waste a lot of time that otherwise you could have had great strong protection and useful tools with Amazon brand registry. So just be really careful. If you've got a really successful product or you've got a big launch with lots of marketing dollars going into something and it really matters, then definitely don't want to take the risk of filing yourself. I saw a study where they looked at five years of data at the trademark office. Study I saw was probably about three or four years ago. Anyways, they took five whole years of data from the trademark office and not a sampling of it. Like all the data. And what they found was that people who filed their own applications, who had filed less than 30 applications previously, only had about a 30% chance of getting a registration at all. It didn't look to the quality of those registrations. And I know some of them are severely lacking in quality, but they only had a 30% chance of even getting a registration. And so having experience and going through the process and knowing what to avoid and how to not make the bad mistakes makes a big difference in being able to get that registration. And having that registration makes a big difference in being able to enforce your rights. So anyways, I hope that's helpful. And all I have to say on the topic today.

Okay. Hey, Jason, thanks so much for that. I didn't understand that history. I think that was one of the more interesting things for me is that the trademark laws were not designed to protect the registrant, or I guess, whoever would you call that the owner of the trademark?

Yeah, the merchant. The person who's selling the merchant or the manufacturer. And it kind of goes back to feudal times, because these trademark laws are a Western creation. And it was basically, you have your nobleman and you have your king, and you have your merchants, who are the craftsmen. And so you have a guy who's making saddles. He makes really great saddles. Nobleman like to buy his saddles because they're really high quality. Someone else wants to sell their saddles, but it's having a hard time, so they start putting the other guy's mark on their saddles and passing off their saddles as if they're the really good ones. So then the nobleman buys the crappy saddle, thinking it's a good saddle. It breaks. His kid falls off the horse. He's upset. He then goes to who he thinks is the manufacturer, shows him the saddle, says, hey, I'm really upset. You better make this right. And that merchant says, this is not my saddle. I don't use those materials. I don't stitch like that. Right. Has all this proof that it wasn't him. That dispute ends up going to the king. The king's job is to deal with these disputes. The king likes the nobleman more than the king likes the merchants. They have a closer relationship. And so the solution that the king comes up with is, all right, merchant, I will give you exclusive rights to your brand, not so that you can be protected. It's so that my noblemen don't end up getting confused and buying the wrong stuff. Right. I want my noblemen to be protected. Now, as our culture has evolved over time, the noblemen that are buying from these craftsmen are now the buying public. They're everybody, right? It's the public, but they're still that protected class. They're still the group that the laws were designed to protect. And so trademark law treats us all like noblemen and treats the merchants like, here. It's your job to protect the consumers. It's not your job to protect what's your property.

But it still is a violation of some sort if a company knocks off your brand, is selling goods under the trademark that you registered.

Yeah, yeah.

Permission, right?

Yeah. But where it starts to get Confusing is that, for example, in copyright law or patent law, then you have this concept of substantial similarity of is it close enough to what is protected that they've infringed on the rights of the owner of what's protected? So you look at how close it is. Okay. But with trademark law, it's not substantial similarity or aversion of that. It's likelihood of confusion. It's not how close is it? Is it close enough that the consuming public would get confused? So it could be identical. Right. But if nobody would get confused, then the law doesn't care. Right. Or it could be pretty different, but if it would still confuse people, then law says it's not. Okay. Right. And so we're not talking about protecting the owner of the property. That's not the test. The test is what do we need to do to protect the people who are going to buy?

And so with Amazon, they created brand registry to try to do this. Is that their mechanism?

So I wasn't in the room when they were making these decisions, and they're not my clients and. Right. So my guess is that they, I mean, they do a ton of business and they also get a ton of people complaining about copycats and counterfeits. Right, right. And so I think it's more of a, hey, we're being flooded with all these demands and we'd like a way to just channel that and automate it so that it costs us less to deal with this part of our business.

So they have a responsibility to deal with it, because all these people that may be violating trademarks, they're all selling on their platform and consumers, the public, as you say, is being confused. They have to play a role.

Yeah. And they, with the way that they've set up their business, they've done a really good job of shielding themselves from liability. Too good of a job, I think, actually. And so there's not a whole lot of accountability with them, but it's still a tremendous annoyance for them to get all these demands and get all these requests. And so I think they just wanted to just funnel that into something that'll solve itself without them having to do.

Makes sense. All right, well, that sounds like very valuable information that you're sharing with everyone today. Thank you so much for that.

You're welcome. Welcome. Excellent.

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