Are you an Amazon seller who needs help registering your trademark to facilitate your enrolling in the Amazon Brand Registry program? If so, you can find answers to frequently asked questions about these and related topics below.
What is a trademark?
A trademark, often known as a brand name, is a word, phrase, symbol, or other identifier that identifies and distinguishes the source of goods of one party from those of others. For example, BMW is a trademark for automobiles, and the Nike “Swoosh” logo is a trademark for footwear. Similarly, a service mark is an identifier that identifies and distinguishes the source of services of one party from those of others. For example, VISA is a service mark for credit card services. The term “trademark” is often used in a general sense to refer to both trademarks and service marks.
Are trademarks important?
Yes! Trademarks are often among the most important and valuable assets of a business. A distinctive trademark allows a business to build public goodwill and a reputation in the goods or services that it sells. Trademarks are protected by law to serve this purpose and to prevent the public from being confused about the source of the goods or services.
What does it mean to register a trademark with the U.S. Patent & Trademark Office (USPTO) or another governing body?
In the U.S., a trademark owner obtains “common law” rights based solely on use of the trademark in commerce. However, by registering the trademark with a governing body, the owner receives additional benefits. For example, by registering a trademark with the USPTO, the owner enjoys a legal presumption of the exclusive right to use the mark nationwide for the goods or services listed in the registration. In addition, registering a trademark with the USPTO allows the owner to record the registration with U.S. Customs and Border Protection to prevent importation of infringing foreign goods.
What is the Amazon Brand Registry?
The Amazon Brand Registry is a program designed to help sellers protect their trademarks on Amazon and to assure customers that they are purchasing authentic products. If you are an Amazon seller, by registering your trademark with the Amazon Brand Registry, you will be able to more effectively protect your trademark on Amazon. Among other things, you will gain access to powerful text and image searching tools, predictive automation when you report any suspected infringement of your trademark, and greater influence over any listings for goods covered by your trademark.
Who can apply to register a trademark with the Amazon Brand Registry, and what are the requirements for registration?
Only certain types of sellers are allowed to apply to register their trademarks with the Amazon Brand Registry. These include trademark owners and their agents (e.g., manufacturers, distributors, or resellers) who have written authorization from the trademark owners to manage content related to the trademark on Amazon.
There are many requirements to register a trademark with the Amazon Brand Registry, but most notably, the trademark (in the form of a word mark) must first be registered with the USPTO or another qualifying governing body. In some limited cases, a seller may be exempted from this requirement. Other requirements include, but are not limited to, providing images of products and/or packaging that show the trademark, and providing a list of countries where the goods are being manufactured and distributed.
How do I register a trademark with the USPTO?
You (or a trademark professional representing you) begin the process by preparing and filing an application for trademark registration with the USPTO. The application needs to specify various types of information including, but not limited to, an identification of the mark and the associated goods or services for which protection is being sought. After the application is filed, an Examining Attorney at the USPTO reviews the application and decides whether it meets the various requirements for registration. If the Examining Attorney identifies any issues, you may need to correspond with the USPTO to resolve these issues before proceeding. If all the requirements are satisfied and no other issues are raised (e.g., by a third-party through an opposition proceeding), the application proceeds to registration.
What are common types of issues that prevent applications from proceeding to registration?
The USPTO examines every application for compliance with federal law and rules. The most common reason to refuse registration is a “likelihood of confusion” between the applicant’s proposed mark and a mark already registered or in a prior-filed pending application owned by another party. The USPTO determines that a likelihood of confusion exists when both (1) the marks are similar, and (2) the goods or services of the parties are related such that consumers would mistakenly believe that they come from the same source. Similar marks or related goods or services by themselves are not enough to support a finding of a likelihood of confusion, unless the mark is deemed a famous mark. That is, generally, two identical marks can co-exist, so long as the goods or services are not related.
The USPTO will also refuse registration of a proposed mark for many other reasons, including but not limited to the mark being: generic or descriptive; a surname; or geographically descriptive of the origin of the goods or services. While some of these refusals are an absolute bar to registration, others may be overcome by evidence under certain circumstances.
Does a trademark need to be used before it can be registered?
Yes. To obtain a trademark registration, the trademark must be used in connection with the associated goods or services. The use must be a bona fide use of the mark in the ordinary course of trade and not made merely to reserve a right in the mark.
Can I file an application for trademark registration with the USPTO myself?
Yes. However, filing a trademark application at the USPTO starts a legal proceeding that may be complex and will require you to comply with all requirements of the trademark statute and rules. Most applicants hire a trademark professional to represent them in the application process.
We are experienced trademark practitioners with a passion for helping companies and entrepreneurs of all sizes protect their brands. As trademark attorneys, we know the ins and outs of trademark law: from registering and enforcing your mark to facilitating enrollment in the Amazon Brand Registry program—and more. To learn how we can help you, please contact us using the form below, or by emailing us at BrandRegistryTM@mbhb.com.