June 2018 Newsletter

Vol 11, Issue 2

The Trademark Registration Requirement for Brand Registries

By Ryann H. Beck

Companies and individuals selling products via Amazon are likely aware of Amazon’s Brand Registry. Though the brand registry has been available for several years, Amazon launched a revamped brand registry program in May 2017 that significantly modified and improved the tools available to brand owners for detecting and reporting counterfeit products and hijacked listings (where unscrupulous sellers piggyback on a brand owner’s listing to sell knock-offs) within the Amazon Marketplace. The Brand Registry program is available to Amazon sellers who manufacture and/or sell their own branded products. Program participants have access to brand monitoring tools, such as counterfeit detection and alert services and search tools for locating transgressing products by brand name or product image. These tools have effectively made it harder for counterfeiters and free riders to sell on Amazon by beefing up counterfeit and infringement detection measures and increasing security and seller-control over listings.

Since the relaunch, Andrus clients have been increasingly eager to utilize Amazon’s Brand Registry and our engagement with clients navigating the registration process has alerted us to certain pitfalls and issues that brand managers face. Enrolling a brand in the Amazon Brand Registry requires an active federal trademark registration in each country where you wish to enroll. The enrollment application requires identifying at least one trademark registration number, which must be for a standard character mark (the text of the brand name) or for a design mark (the logo image) that exactly matches the brand name being registered. Note that Amazon offers these protections on a territorial basis, and registrants must have a trademark registration in each territorial market where they want protection. Brand Registry protection is available in the Amazon Marketplaces for the following locales: the United States, Brazil, Canada, Mexico, Australia, India, Japan, France, Germany, Italy, Spain, the United Kingdom, and the European Union. U.S. state trademark registrations are not accepted, and pending federal trademark applications are insufficient. The applicant must also provide images of their brand’s logo, a list of product categories in which the brand should be listed (e.g., apparel, sporting goods, electronics), and a list of countries where the branded products are manufactured and distributed.

Amazon verifies the legitimacy of each registration as part of the application process by sending a verification code to the “correspondent” listed on the federal trademark registration. The correspondent is typically the attorney or firm that filed and prosecuted the trademark application. The registration instructions prompt the applicant to contact their attorney or trademark registration agent to retrieve the verification code and provide it to Amazon to complete enrollment. This is an important step in the process and one that should not be ignored. Amazon’s email to the listed correspondent will not identify the applicant, and will only identify the registered trademark and advise the correspondent that someone is seeking to register a related brand. Moreover, depending on how the contact information for the correspondent is listed, the email may not even go directly to the attorney or agent and may instead be directed to a general docketing email address or some other email address associated with the firm. Thus, it is important that brand registry applicants notify their attorney or federal trademark registration correspondent about the brand registry verification email, which typically arrives 2 to 10 business days following application submission. That way the attorney can expect and locate the confirmation email from Amazon, even if it does not get addressed directly to that attorney.

As online marketplaces like Amazon compete for product suppliers, expect to see competing marketplaces launch their own brand protection tools like Amazon’s Brand Registry. As these tools proliferate, brand managers need to understand the intricacies of the registration and enrollment process. Additionally, those considering use of the Amazon Brand Registry should file their trademark application as soon as possible, understanding that trademark applications in the United States usually take 6 to 12 months to reach registration (and potentially longer if the application faces rejection or objections from the Patent and Trademark Office). Further, brand managers increasingly need to consider their brand presence on online marketplaces when applying for federal trademark applications because brand protection tools require an exact match between listed marks and federal registrations. While trademark registration has always been an important part of developing and protecting a brand, marketplace brand registry tools provide yet another reason to consider federally registering your trademark.

Joe Kuborn and Aaron Olejniczak Named IP Stars by Managing IP

Attorneys Joseph D. Kuborn and Aaron T. Olejniczak were selected for inclusion in Managing Intellectual Property's 2018 edition of the IP Stars list. Managing IP’s World IP Survey covers over 80 jurisdictions, and the rankings are based on extensive research among IP practitioners carried out over six months. A team of researchers seeks responses from thousands of firms and clients. IP Stars highlights attorneys with a strong understanding of products and industry areas, as well as the requisite legal experience. 

Andrus Ranked in Chambers USA 2018

Andrus was selected as a ranked law firm in Chambers USA 2018, identifying our firm as one of the best firms in Wisconsin in the field of intellectual property law. In addition to the firm-wide ranking, Attorney Aaron Olejniczak was included in their Spotlight Table for intellectual property litigation, and Attorney Peter Holsen was included as a Recognised Practitioner in intellectual property. Chambers ranks lawyers and law firms based on the research of over 170 full-time editors and researchers at their head office in London. Researchers talk to lawyers and clients, conducting in-depth telephone interviews, and review submission forms provided by law firms.

Andrus Included on 2018 IAM Patent 1000 List

Andrus was once again included in the guide entitled IAM Patent 1000 - The World’s Leading Patent Practitioners. The IAM Patent 1000 is a standalone publication that identifies individual and firm expertise in all major areas of patent law and practice. Through an extensive research process by a team of highly qualified analysts, the publication identifies the top patent practitioners and law firms in 40 of the world’s most important jurisdictions and 20 U.S. states. In addition to firm-wide recognition, Joseph Kuborn, Aaron Olejniczak, Peter Holsen, Tambryn VanHeyningen and Benjamin Imhoff were featured individually, based on positive feedback from clients and associates.