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

By: Christopher Heer, Toba Cooper, Daryna Kutsyna | Last updated: September 10, 2018

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 has established the Amazon Brand Registry program. Amazon's Brand Registry allows sellers greater control over who can use their brands and logos on Amazon, provides a convenient system to report violations and educates sellers on how to prevent trademark violations.

The services Amazon offers through its brand registry include investigating product listings that use trademarked terms or logos in their titles or descriptions, investigating sellers who sell products with your trademark in countries outside of the scope of your distribution, and flagging listings that have been created with your trademarked product name that fall outside of the types of goods that you sell.

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.

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.

USPTO-Issued Trademark Registrations

To be eligible for Brand Registry protection, 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 also be required to produce images of the brand's logo and to supply a list of categories of goods to which the trademark applies. Further, Amazon's Brand Registry will require you to list all the countries in which you plan to sell your product.

If your trademark meets the eligibility requirements, you will need to sign into Amazon's Brand Registry to enroll in 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 in your account, you will be asked to provide all of the above information to the Brand Registry in addition to 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.

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.

CIPO-Issued Trademark Registrations

Registering CIPO-issued trademarks on Amazon is currently problematic due to an operational conflict between their respective systems. Although Amazon currently accepts registered word trademarks and registered design trademarks issued by CIPO, it appears to be impossible at this time to register them in Amazon's Brand Registry in practice. That is because Amazon's verification system, which is described above, requires an email or phone number to be present on the official registration certificate or registration page provided to the registrant by CIPO.

At present, CIPO does not include any contact information, other than a mailing address, on the registration certificate for either the trademark registrant or the lawyer that is representing them. Moreover, CIPO has not announced any intention to change its system. Because of this, it does not appear possible for Canadian trademark owners to complete Amazon's Brand Registry ownership verification process for Canadian trademark registrations.

We will continue to monitor this situation and will update this article if either Amazon or CIPO changes its process.

Other National Trademark Registrations

Amazon currently accepts registered trademarks from several other countries into the Amazon Brand Registry. Notably, registered trademarks from the United Kingdom, Germany, France, Australia and Mexico are all eligible for registration in the Amazon Brand Registry, provided that they are currently registered in their country. For most countries on the list, registrations extend only to word and design marks, and word marks are only accepted from some countries.

The procedure for all the countries 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.

Related resources:

Trademark FAQ