KMK Law Intellectual Property Blog

If you sell private label products on Amazon, please listen up! Amazon recently released its Brand Registry 2.0. The new and improved Brand Registry is Amazon’s most recent attempt to combat brand violations on its online marketplace.

Under the old regime, as a seller on Amazon, you could enroll in Brand Registry by proving that (1) you own a domain name that displays your brand and (2) your brand appears on your actual product or is visible on your packaging. Sellers also had to provide a list of product categories (e.g., apparel, sporting goods, electronics) in which the brand should be listed and the countries where the brand’s products are manufactured and distributed.

The new regime, however, requires that you also own a registered trademark. The trademark must be a “standard character mark” and it has to match the brand name printed on your products and/or packaging. Currently, Amazon is only accepting active word marks that have been registered in the following countries: the US, Canada, Mexico, India, Japan, France, Germany, Italy, Spain, the UK and the EU.  

If you enrolled in Amazon’s Brand Registry prior to April 30, 2017, Amazon is encouraging sellers to re-enroll in Brand Registry 2.0, assuming you meet the eligibility requirements noted above.

So, why is Amazon making it more complicated for sellers to protect their brands on its online marketplace? According to Amazon,

In addition to enrollment in Amazon’s Brand Registry 2.0, federal trademark registration offers the following benefits:

• Right to use the ® symbol to notify third parties the mark is federally registered;
• Right to file a trademark infringement lawsuit in federal court and to obtain monetary remedies;
• It acts as a bar to the registration of another confusingly similar mark;
• Right to claim certain advantages in seeking registration of the mark abroad under certain international treaties;
• It constitutes constructive use of the mark as of the date of the application and a right of nationwide priority against others (with certain exceptions) in connection with the goods/services identified in the registration;
• Right to record the mark with U.S. Customs & Border Protection to block importation of products/materials bearing infringing or counterfeit marks;
• It constitutes prima facie evidence of validity of the registered mark, of registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark with the goods/services designated in the registration certificate; and
• After the fifth anniversary of the registration date, the grounds for cancellation of the registration are limited.

There are also some practical benefits to federal trademark registration. If brand owners want to utilize online enforcement tools, such as eBay’s VeRO program, Instagram’s trademark infringement reporting mechanism or Twitter’s trademark issue reporting form, trademark registration may be necessary or helpful. And in programs such as Amazon’s Brand Registry 2.0, trademark registration is a requirement.

So, if you’re selling private label products on Amazon and own a registered trademark, enroll in Amazon’s Brand Registry 2.0. And if don’t own a trademark registration for your brand, please consider consulting with any of KMK’s IP Group lawyers – we can help you register your mark in the US and abroad. Registration will enable you to take advantage of the full array of enforcement tools, including the enforcement tools available to brand owners online.