How to Protect Your Trademarked Goods on Amazon through the Amazon Brand Registry

Online marketplaces have become one of the most popular places to sell goods to consumers across the world. Amazon, in particular, attracts millions of buyers and sellers from across the globe. Unfortunately, online marketplaces are also ripe for infringement of intellectual property, with counterfeiters aiming to capitalize on the goodwill that has been established by legitimate brands.

To protect the intellectual property of its branded sellers, Amazon established the Amazon Brand Registry program. Amazon's Brand Registry provides sellers with greater control over who can use their brands and logos on Amazon, provides a convenient system via which to report unauthorized use of these brands and logos, and educates sellers on how to prevent trademark infringement.

Sellers with registered brands benefit from Amazon’s help in identifying and removing bad listings. With the information submitted in the course of the registration process, Amazon is able to identify listings for products that use your trademarks but don’t belong to your brand, images that contain your logo but depict someone else’s products, sellers shipping from countries in which you do not manufacture or distribute your products and using your trademarks, and listings being created with your trademarks despite your full product line already having been listed on the marketplace. In addition, sellers can themselves identify bad listings with specialized search tools provided by the platform. As of 2019, sellers can independently remove counterfeit listings from the platform.

For holders of the Amazon North America Unified Account (NAUA), trademarks that are successfully enrolled in the Brand Registry on amazon.ca will automatically be valid for the amazon.com Brand Registry, and vice versa. For other account holders, both brand registries must be entered individually.

To qualify for enrolment in the brand registry, sellers, generally, must have an active registration or a pending trademark application for the mark they want to protect in at least one of 20 eligible jurisdictions. A pending trademark application filed through Amazon IP Accelerator also allows for eligibility. Enrolment of US and Canadian trademarks is detailed in particular depth below. Notably, the trademark sought to be enrolled must appear on the seller’s products or their packaging.

Amazon's Brand Registry is free to use for Amazon sellers as part of the larger package of services offered by it and as part of Amazon's commitment to the protection of intellectual property. Another among these services is Amazon’s “Transparency”, now available in Canada, the US, and several other jurisdictions. Transparency is a product serialization service for Amazon sellers. After a seller enrols their products in Transparency, each product is issued a unique code as an indicator of authenticity. These codes are applied by the seller to its products such that Amazon is able to scan the codes during fulfillment to ensure only authentic units are shipped to customers. Customers can also use the codes to authenticate the products they receive. Amazon now also offers Project Zero, which uses Amazon technology combined with brand insights to detect and remove counterfeits. To be eligible to enrol in Project Zero, you must have a Brand Registry account with a registered trademark and a rights owner role. Additionally, you must have submitted reports of potential infringement through the “Report a Violation” tool with an acceptance rate of at least 90% over the last six months.

USPTO-Issued Trademark Registrations

To be eligible for Brand Registry protection, generally you must have a registered trademark.

If you have a USPTO-issued trademark registration it must meet two requirements:

1. The trademark must have a registration issued and be active on the Principal Register; and
2. The trademark must either be a text-based mark or an image-based mark. Text-based marks must include typeset word(s)/letter(s)/number(s) or be a standard character mark. Image-based marks that is either an illustration drawing which includes word(s)/letter(s)/number(s) or words, letters or numbers in a stylized form.

If your trademark fulfills these requirements, you will be required to produce your brand name, your trademark registration number, and supply a list of categories of goods to which the trademark applies and countries where your brand’s products are manufactured or distributed.

If your trademark meets the eligibility requirements, you will need to sign into Amazon's Brand Registry to enrol it. You can use your existing Seller or Vendor Central credentials to do so or can create a new account if you do not yet have a seller account on Amazon.

Once signed into your account, you will be asked to provide all of the above information to the Brand Registry as well as additional information about your business. Amazon's Brand Registry also requires a scanned copy of an official registration certificate or other USPTO-issued proof of trademark ownership.

After this information is submitted, Amazon's Brand Registry will use the contact information provided on the USPTO certificate – either a phone number or an email – to verify that you are, in fact, the owner of the trademark registration. A code will be provided to you, which will then need to be entered online.

Once you complete the verification process, your trademark will be officially enrolled in Amazon's Brand Registry and you will be able to monitor any acts of infringement that occur on the Amazon platform.

Note that while Amazon was previously running a pilot program which accepted certain pending trademarks for enrolment in the Brand Registry (i.e., marks which had been applied for but not yet registered), this program appears to have been terminated. With the exception of Poland, marks sought to be enrolled in the Brand Registry must have been registered in one of the 20 accepted jurisdictions.

Please note that if you are an Amazon seller and/or vendor who enrolled in the Amazon Brand Registry prior to April 30, 2017, and subject to your brand meeting eligibility requirements, you will need to re-enroll your brand.

If you have purchased a brand from another business and would like to access the Registry, you will need to request access by sending an email to Amazon’s Brand Registry team with the following information: the email address associated with your Brand Registry account; the email address associated with the current rights owner’s Brand Registry account; and the name of the brand currently enrolled in Brand Registry.

CIPO-Issued Trademark Registrations

Registering CIPO-issued trademarks on Amazon was once problematic due to an operational conflict between their respective systems which prevented Amazon from accessing the contact information necessary to verify ownership of a trademark for which registration is sought.

At present, CIPO does not include any contact information, other than a mailing address, on the registration certificate or in the register for either the trademark registrant or the lawyer that is representing them. However, Canadian trademark owners are now able to complete Amazon's Brand Registry ownership verification process for Canadian trademark registrations by providing contact information for their lawyer in the course of enrolling their trademark in the Registry. Amazon will contact the lawyer to verify ownership of the trademark.

This operational change allows Canadian trademark owners to finally benefit pain-free from this very valuable tool.

Other National Trademark Registrations

Amazon currently accepts registered trademarks from several other jurisdictions into the Amazon Brand Registry. These include:

• Brazil
• Mexico
• Australia
• India
• Japan
• France
• Germany
• Italy
• Turkey
• Singapore
• Spain
• Saudi Arabia
• United Kingdom
• European Union
• United Arab Emirates
• Poland
• Egypt
• Sweden
• Benelux (an intergovernmental cooperation of Belgium, the Netherlands, and Luxembourg)

For most of the countries/regions on the list, eligible marks are the equivalents of word and design marks in Canada and the US.

The procedure for all these countries/regions is the same as the one outlined for U.S. trademark registrations above, which includes creating a brand registry account, entering your registered trademarks and the categories of goods to which they apply, verifying your identity as the owner, and monitoring the Brand Registry once enrolled.

Conclusion

Selling your goods on Amazon can be an excellent way to broaden and diversify your client base across multiple countries and continents. However, your success on Amazon may open you up to third parties trying to capitalize on the goodwill of your brand. If you are gearing up to sell on Amazon and hoping to protect your branded goods with a trademark registration so you can enforce it on Amazon's Brand Registry, please contact us now for a complimentary and confidential initial telephone appointment to discuss your options for proceeding.