Amazon® is an incredible source of opportunity for entrepreneurs of all kinds — but also a major source of headaches when it comes to infringement. It can be frustrating to find knockoff versions of your products being sold on this platform, and confusing to figure out the best way to stop it. If you are worried about unauthorized copying, here is a roadmap you can refer to as you plan your brand growth and protection strategy.
Before the Infringement Begins
There are a number of basic steps you can take to protect your products from the get-go, and each one provides its own benefits:
Many products sold on Amazon can be protected with federal copyright registration, and this process is both simple and relatively inexpensive (less than $500 including government filing fees). The first step is making certain the creation actually belongs to you or your company, and this often involves looking at your company agreement, employee contracts, or independent contractor provisions. Once it is clear you have ownership over the creative work, and have information compiled such as the date of creation, filing with the Copyright Office is a relatively smooth process. Copyright registration is critical for certain types of enforcement (see below), so it is worth thinking through this option.
A trademark is a phrase or design that identifies the source of your product or service. (Here is a good refresher article on this). Good examples are the word NIKE® or the Nike Swoosh symbol. While some infringement on Amazon comes from a seller creating a copy of your creation, other infringement involves the fraudulent seller improperly using your brand name or logo. This can confuse customers as to which items are really yours, and can cause you to receive bad reviews in which you are blamed for the low product quality or shipping delays of the infringer. By filing for federal trademark protection, you can secure your ownership over that phrase or design at the core of your brand, and you can open up a pathway to the Amazon Brand Registry (see below). The trademark application process is longer and more expensive (about $1,500 including government filing fees), but it has a key benefit — the day you file is your “priority date” over other users of the mark. In short, this means that future applicants for the same or similar mark will face issues because you got there first.
Utility patents protect the functionality of an innovations, and design patents protect certain choices as to the appearance of an innovation. Each of these can be a powerful tool for making clear that you are the original innovator, and securing a patent can provide for years of protection. That said, obtaining a patent is the longest (sometimes years) and most expensive (often over $10,000) approach, and the decision to go down this path should be carefully considered. That said, patent protection provides yet another enforcement mechanism to stop infringement on Amazon, and can be a crucial part of building a solid brand portfolio.
Amazon Brand Registry
Once you have secure trademark registration, a critical step is enrollment in the Amazon Brand Registry. This Amazon program allows you to associate a registered trademark with your seller account, and streamlines enforcement options down the road. While Amazon has shifted back and forth over time, the general rule has been that you can only enroll in the Registry once you have a federal trademark registration number — having a state trademark, or a pendiing federal application, generally isn’t enough.
After the Infringement Begins
Once you have identified an infringer on Amazon, there are a few basic options you can pursue:
Amazon provides a simple form for reporting infringement on its platform, and having a registration number can speed up the response significantly. As you see below, each of the types of protection we’ve covered can be the basis for reporting.
Notably, your prior enrollment of a trademark into the Amazon Brand Registry makes this process simpler, as Amazon does not need to take the additional steps of reviewing and confirming your trademark. In essence, your Registry enrollment is a “preclearance” that front loads that work. Once you file an allegation using this form, Amazon will review the items or seller you are reporting and make a determination — this may result in no action, or may result in the infringing item being removed. The seller may even be suspended and notified. While this can provide short-term relief from the issue, a common problem is that infringing sellers may simply set up new listings or even new seller profiles.
If you have secured federal protection (such as copyright, trademark, or patent), taking action in federal court may be a good option for you. Clear infringement can be stopped by obtaining a federal temporary restraining order (a “TRO” or “injunction”) telling Amazon to take down the infringing listings and to freeze the assets of the infringers. This sends a strong message to infringers, stops the ongoing infringement, and can result in a judgment that provides payment to the victim out of these locked-up funds. While litigation can be expensive, options include working with a law firm that handles these cases on contingency (fronting the costs and taking a percentage of the return) or using litigation finance (getting funding from a third-party to pay for the costs and attorney fees).
Each of these options has its own risks and benefits, so you should certainly speak with an attorney experienced in intellectual property, brand protection, and federal litigation. The real takeaway is that you have multiple options to minimize and resolve Amazon infringement — this platform should benefit you, and not those who want to copy your creations and benefit from your hard work.
For more information on this article and this topic, contact James Creedon.
P.S. Wondering about the wonderful world of addressing Chinese infringers, Hague service, and unlawful copying in China? Stand by for an upcoming blog post!