Trademarking 101 For Amazon Sellers
Originally posted on https://www.esqgo.com/trademarking-101-for-amazon-sellers/
Thinking of listing your products on Amazon?
Planning on getting a registered trademark through USPTO for your brand?
Considering the costs and length of time it will possibly eat up?
Wait no more and read on for a crash course on trademarking your Amazon brand!
AMAZON BRAND REGISTRY – Getting you on the map
Before you can start raking in sales from Amazon as a brand, you have to enroll yourself in the Amazon Brand Registry. The Registry allows you to enforce your intellectual property rights, grants you control over your product listings, search through different Amazon marketplaces/stores (global search), find product listings that infringe upon your own products using logos or images (image search), look up product listings using ASINs (bulk ASIN search), gives you access to report infringement violations and product review manipulations that reflect poorly on your reputation as a seller/vendor, and report technical issues.
The Amazon Brand Registry also gives you the marketing tools you need to boost and monitor sales such as the Enhanced Brand Content (EBC) and Amazon Storefront. One more icing on the cake is the anti-counterfeiting tool Transparency, a code program Amazon has provided for both sellers/vendors and customers alike to address authenticity issues of products shipped and delivered.
WHAT YOU NEED TO REGISTER – Preparing to file
Now that you have decided that it is imperative that you enroll your brand on the Amazon Registry, you need to prepare for the three things that are essential to get you on board. To enroll on the Amazon Brand Registry, you need:
- an active registered trademark for your brand that appears on your products or packaging with the trademark office in the country you have your product listed (in the US, this would be the USPTO; in other countries, this list will serve helpful.)
- ability to verify yourself as the rights owner or the authorized agent for the trademark (government-registered trademark number or your trademark attorney’s contact details)
- and an Amazon account as a vendor or seller (through Amazon Vendor Central or Amazon Seller Central).
GETTING YOUR TRADEMARK REGISTERED – The ® Mark In 6 steps
The Goliath requirement of getting a registered trademark through the United States Patent and Trademark Office (USPTO) can be daunting and tedious. With all the bureaucratic red tape and time-consuming wait time, it can be an obstacle for you to get listed if not done properly. Don’t let it be.
Here’s the lowdown on the trademark registration process and how your trademark attorney can help you get the coveted registered trademark for your brand and start selling on Amazon.
First, you have to come up with an original mark of your own that would be representative of your products/goods. Get creative in thinking up of a text-based mark or an image-based mark with words, letters, or numbers. Two basic types of mark would be classified into:
- standard character mark – a mix of letters, words, or numbers without taking into account the font or style you use with it
- design/stylized mark – the design, logo, drawing, or appearance that you would like to represent your brand which may or may not be accompanied with letters/words
Highly creative heads go beyond the basic types and trademark the sound (think of the lion’s “roar at the beginning of every MGM-produced movie), packaging (Coke bottle), label, colors, slogan (a famous slogan would be Nike’s “Just do it”), or a composite of any of the aforementioned. The most vital thing to keep in mind however is to ensure the registrability of your mark as best as possible.
(For an in-depth discussion of the Tradeark Spectrum, and what makes a great trademark – see this article.)
The second step will be the x-ray before the surgery. Your mark will undergo a thorough search and clearance for any similarities or likelihood of confusion between the goods and/or services that consumers would think that they come from the same source. This salient step delves into a search of even those marks by parties who have no federal registration but who may have a better claim than you through “common law” rights. Marks which are already registered or may have a prior-filed application by another party may also lead to refusal by USPTO for registration of your mark. A lot of ground is to be covered here but a thorough search must basically involve:
- USPTO’s Trademark Electronic Search System (TESS) database
- Unregistered marks protected by “common law”
- Business directories
- Domain names
- Various search engines
Remember that filing fees with are non-refundable and are on a per product/good basis, thus failure to do a thorough search of your mark can be costly and not to mention time-wasting. Even more vital to the matter, comprehensive search and clearance of a proposed mark is necessary to avoid future legal problems by other trademark owners who have a stronger protected legal claim.
Third, you need to find a legally acceptable identification of your goods and/or services in the USPTO Trademark ID Manual. The manual is aligned with the 45 International classes (commonly called around the globe as the Nice Classification) proposed by the World Intellectual Property Organization. The third step sounds simple enough however it is critical that precise classification is done to avoid delays and even possibly non-registration of your trademark. It gets more complicated when you consider the future possibilities of adding more variety to your goods and/or service. You do not want to limit your classification to Class 32 (Light beverages) because you are selling beers now, when you may want to include snacks like crackers in the future to your line of business.
Step four is establishing the basis of filing your mark. Your basis of filing is derived from the Trademarks Act of 1946 wherein you can invoke your right to use the mark and prevent other parties from using the same or similar marks (whether identical or related). The Trademarks Act provides you four possible bases:
- Use in commerce basis (under Trademark Act Section 1(a)) – your mark is currently in use even prior to filing the application and you wish to have it registered
- Intent-to-use basis (under Section 1(b)) – you express a bona fide intent to use your proposed mark for your goods and/or services in the near future
- Foreign registration basis (under Section 44(e)) – you have a foreign registration outside of the country you are applying for registration using the same mark
- Foreign application basis (under Section 44(d)) – also known as “foreign priority basis”; you have an application filed overseas prior to your U.S. application within six months of your USPTO registration application
The abovementioned filing bases have specific legal requirements that are asked of you for successful application. Most U.S. applications are based on use-in-commerce or intent-to-use in the future. For use-in-commerce basis, an example of the use of the mark is required, while for applications based on intent-to-use, an additional form (called the Statement of Use) and fees are required.
Fifth, the actual filing of the application for registration is conveniently done online via the Trademark Electronic Application System (TEAS). The system is a hub not only for filing applications, but also for paying your fees, sending and receiving communications regarding the application, filing amendments, corrections, renewals, and other miscellaneous forms. Initial application filing fees depend on two elements, the type of application form used (electronically using TEAS Plus, TEAS RF, or TEAS Regular forms, or via paper) and the number of International classes of goods and/or services applied for. Paper applications have the highest filing fees per class ($600). Initial fees for online applications are more attractive at the following rates:
- TEAS Plus – $225 per class of goods/services
- TEAS Reduced Fee (RF) – $275 per class of goods/services
- TEAS Regular – $400 per class of goods/services
The above forms vary in their minimum filing requirements and offer different benefits. (For the most updated schedule of trademark fees, click here.) There may also be additional fees for filing and after mark register fees throughout and after the whole trademark application process so it’s best not to restrict one’s self to the fees above.
The last step of the trademark application process is the waiting game. There are a lot of possibilities on how the application may proceed. In the best case scenario, three months after filing, an examining attorney determines whether federal legal requirements are met for registration.
If you get a favorable decision, you will receive a Notification of Publication of your application for the public to be advised and raise objections to your application once published on the Official Gazette online. Sans any opposition during the 30-day publication, a use-in-commerce application is issued a registration certificate approximately 11 weeks after publication. For intent-to-use applications, a Notice of Allowance (NOA) is issued 8 weeks after publication. The NOA allows the use, not the registration (yet), of your mark in commerce. Within 6 months of the NOA issuance, you must file a Statement of Use (SOU) which states that you are using the trademark in commerce with your goods or services. If your SOU is accepted, your trademark will mature to registration and publication.
If a refusal of registration is decided by the examining attorney, an Office Action is sent out detailing the reasons for refusal which must be corresponded with within a 6-month period from date the Office Action was issued. A trademark attorney will prove to be invaluable in corresponding with the USPTO for you.
UNLOCKING POSSIBILITIES – Starting your Amazon journey
Now that you have your hard-earned trademark registration, you can go ahead and establish an Amazon Seller or Vendor Central Account (if you don’t already have one) and get approval for the Amazon Brand Registry for free. Clients have mostly been approved for the registry within 24 hours, but it may take longer if traffic is high. Once your brand is on the registry, possibilities are endless on how you can make money on the biggest online retail marketplace. Another minute of waiting is another dollar lost, good luck!