For over twenty years, I’ve talked with brand owners about the importance of registering their trademarks, but a relatively new reason to register has popped up that has nothing to do with the law and everything to do with Amazon. More specifically, the Amazon Brand Registry, which is an attempt by the online retail giant to help brand owners fight the widely-reported problem of counterfeiting on its systems. The Brand Registry promises many benefits, including proactively removing suspected infringing items. Although enrollment requirements are strict, the competitive advantages of selling products on the Amazon platform seem to more than compensate. We aren’t affiliated with Amazon and don’t formally endorse the program, but we do see a growing number of clients seeking help to qualify for the program and to obtain the type of trademark registration they need to do so.

Benefits of the Amazon Brand Registry

According to Amazon, the Brand Registry can help your brand both by giving you greater control over how your brand is presented to buyers and by protecting your brand from counterfeiters. The Brand Registry uses machine learning to proactively identify and remove potential infringements, and it allows you to

• exercise greater control over your product pages, including product titles, descriptions, and images;
• find potential infringements of your trademarks and products using more powerful search tools, including the ability to perform global searches across Amazon’s various stores, image searches that match your logos and products, and bulk searches;
• more easily report infringing products to Amazon; and
• block others from hijacking your brand on Amazon by enrolling in the Brand Registry before you do.

Requirements to Join

To qualify for the Amazon Brand Registry in the U.S., you must own an active trademark registration on the Principal Register, not the Supplemental Register. You can be forgiven if you did not know that the U.S. has two registries for trademarks, but understanding the difference is critical to enrolling in the Brand Registry.

The Principal Register is what most people think of when they think of registering their trademarks. It provides the very significant benefits that I’ve been telling clients about for all these years, such as exclusive rights throughout the U.S., the right to use the ® symbol, and in certain circumstances the right sue for treble damages, among other things.  Until recently, these were basically the only reasons to register a trademark, but for some clients these benefits have taken a backseat to qualifying for the Brand Registry.

For those brand owners that prioritize the Brand Registry, it is particularly important that their trademarks don’t end up on the Supplemental Register, which is a sort of holding ground for trademarks that the U.S. Trademark Office does not believe function as trademarks yet. These marks are “merely descriptive” of the underlying products or services, which makes them ineligible for the Principal Register and, as a result, ineligible for the Amazon Brand Registry. Before filing a trademark application, you should identify whether your trademark might be merely descriptive. Good trademark counsel can do that for you and can also suggest strategies for getting onto the Principal Register, such as combining a descriptive mark with a distinctive design.

Protection Outside the U.S.

You can also use the Amazon Brand Registry in other countries, but Amazon requires you to have a trademark registration in each country where you wish you enroll. In addition to the U.S., Amazon currently accepts registrations from Brazil, Canada, Mexico, Australia, India, Japan, France, Germany, Italy, Spain, the United Kingdom, the European Union, Turkey, and the United Arab Emirates.

Many brand owners that might never have paid attention to possible international trademark registrations now have an incentive to consider them. If you have any interest in selling your products through Amazon in other countries, you should consult with trademark counsel who has extensive experience with international filings and managing global trademark portfolios, like the lawyers at Patent GC.

Tips for Enrolling in the Amazon Brand Registry

From my work with many clients seeking the benefits of the Amazon Brand Registry, I can offer several tips to help you enroll:

• If you already own a trademark registration for the brand that you wish to enroll in the Brand Registry, confirm that the registration is on the Principal Register, not the Supplemental Register. You can tell by looking at the Certificate of Registration sent by the Trademark Office or by looking at the registration’s record in the Office’s online database. If your mark was registered on the Supplemental Register, consult with trademark counsel about strategies for reapplying for the Principal Register.
• If you don’t already own a trademark registration, consult with a trademark attorney who is very familiar with the requirements of the Brand Registry and who can advise you on strategies for obtaining the necessary registration on the Principal Register. Let them know upfront that your goal is to qualify for the Brand Registry so that the strategy can be adjusted as necessary. If your lawyer does not seem to understand the significance of your goal, consider finding trademark counsel who does.
• If you would like to enroll in the Brand Registry in other countries, consult with a trademark attorney with extensive international experience who can assist with international filings. If you are filing a new trademark application in the U.S., talk with your attorney about how you can take advantage of international treaties to obtain priority treatment in many countries based on your U.S application.
• When you apply for the Brand Registry, Amazon will send an email to the address currently on file with the Trademark Office to confirm that you are the owner of the trademark registration you’ve submitted. If you used trademark counsel to obtain your registration, he or she will very likely be the listed contact and will receive that confirmation email. Therefore, it is important that you use trademark counsel who will be responsive to such emails from Amazon and act on them quickly. You might also want to confirm ahead of time whether you will be billed for processing such emails. I routinely respond to such emails as quickly as I can, usually before my clients even ask, and do not bill the time involved, but practices vary so you should confirm things beforehand to avoid unexpected delay and expense.
• Alternatively, you might consider updating the Trademark Office’s correspondence information for your registration to include your contact information. You can use the Office’s online “Change of Correspondence Address” to do so.  (Note that you should only do this after your registration has issued, not during the application process, to avoid possible abandonment of your application.) You can also ask your trademark counsel to make the necessary filing for you, which might reasonably entail a fee for the time involved.

According to Amazon, brands enrolled in the Brand Registry report an average of 99% fewer suspected infringements. Given that and the other benefits, it’s easy to see why more than 130,000 brands have reportedly joined the Brand Registry, including a growing number of my own clients. With proper preparation, you can position yourself to receive these benefits, too—not to mention all the significant traditional benefits that happen to go along with trademark registration. For assistance qualifying for the Brand Registry, please contact Wade Savoy directly at wsavoy@patentgc.com or request more information by visiting our Contact Us page.