Amazon Sellers’ Guide to Trademark Law

By: CJ Rosenbaum Esq., Anthony Famularo Esq., Christopher Abiuso, and Benjamin Lobley
Book: Amazon Sellers Guide - Trademark Law
It’s crucial to register your trademark to protect your product/s from being infringed upon.

Without registering the trademark, your ability to enforce your intellectual property rights is limited to your geographic area.

In contrast, if you register with the USPTO, your trademark will be extended to the entirety of the US.

This book focuses on informing sellers about protecting their brand and the steps that can be taken to prohibit infringers.

There are two main goals of this book: Educate online sellers about trademark law and how it affects them, and to teach online sellers how to protect their trademarks from infringement or avoid infringing on others.

Donate to Download: Amazon Sellers’ Guide to Trademark Law

Donate

Ty Louis Campbell Foundation

All donations go to the Ty Louis Campbell Foundation

Amazon has a program called AmazonSmile. You sign on through AmazonSmile then it allows you to pick a charity. Once you pick a charity, it doesn’t cost you, the buyer, anything. It doesn’t cost the seller anything. Amazon then kicks back a small portion of the sale to the charity you pick.

Our charity is the Ty Louis Campbell Foundation. It was founded by a close friend of mine named Lou Campbell and his incredible wife, Cindy. When they lost their son Ty, they turned tragedy into triumph and their pain into productivity as they created this foundation. If you’re shopping on Amazon, use AmazonSmile and I would ask you to pick the Ty Louis Campbell Foundation.

Amazon will donate money to the foundation to help find better treatments and, God willing, a cure to pediatric cancer. By doing this, I’m helping to raise money, you’re helping to raise money, and together we are helping to make this world a better place.

The Ty Louis Campbell Foundation is a nonprofit organization that funds innovative research and clinical trials specifically geared toward the treatment of the most aggressive childhood cancers with a strong focus on brain tumors.

Their mission is to help fund the intelligence and technology that will improve long-term survival rates and minimize side-effects for children diagnosed with the deadliest cancers, while helping to care for families when their child is in treatment by providing financial assistance and uplifting experiences. (EIN: 45-1858390)

We wrote the books on doing business on Amazon and maintain the #1 site for Amazon sellers.

We can assist you in discovering the issues within your Amazon seller account that caused a suspension. We provide a detailed analysis of your account, identify the underlying issues, and figure out how to address each of them before we complete your Plan of Action and get your account reinstated.

Rosenbaum, Famularo & Segall, PC focuses on 3 major areas for Amazon sellers:

  1. Suspensions: Plans of Action for non-legal suspensions and obtaining withdrawals of intellectual property right complaints.
  2. Arbitration against Amazon: when Amazon refuses to reinstate accounts or seizes money/goods belonging to Amazon sellers.
  3. Brand Protection: for private label sellers on all ecommerce platforms.

GET HELP NOW: We protect your privacy under the Attorney-Client Privilege by law.

submit a case to Amazon Sellers Lawyer
Brandon J.
Brandon J.
15:10 25 Jun 21
Called with a question about Amazon private labelling and how to trademark a product and was blown away by the value and quality of information offered, even by a free and quick phone consultation.
Fred S.
Fred S.
01:41 23 Jun 21
Our account got reinstated after 7 months of repeatedly being denied for an suspected IP violoation that Amazon would not clear . After several attempts I was begining to lose hope but thanks to Declan, and Ashley for their persistant efforts. They had a great game plan. Overall excellent team effort from start to finish. These guys know how to get the job done. After being left for dead, I am very excited to start selling again. If any issues occur in the future this is my team.
PPP
PPP
00:39 19 Jun 21
We contacted Rosenbaum Famularo & Segall following a serious IP protection issue. Both Nicole and CJ were extremely helpful, prompt and knowledgeable from the start. Highly recommended.
Protection R.
Protection R.
07:27 04 Jun 21
Thank you, Anthony Du Zhang, for helping us get our account back. Our case is not a simple one. We contacted Amazon Seller Lawyer after several unsuccessful appeals. Anthony told us the possibility of getting back the account is low but not impossible. He assisted us in reaching the rights owner. When they stopped responding, Anthony helped us formulate POA and contacted the Account Health team multiple times to clarify a better approach. We learned a lot along the way. And finally, our account got reinstated. We will surely cooperate with you again for more legal and IP advice. Thanks again.
Alejandra G.
Alejandra G.
00:11 21 May 21
I had received over 70 IP complaints from a brand and that’s when I found this firm online. My case was assigned to Briana London. She worked on my case tirelessly for 3-4 months and she never gave up on me. She contacted the rights owner, got all complaints retracted, and drafted up a very professional appeal and plan of action which got my amazon seller account reinstated. If future problems come up, I will know who to look for. Thank you so much. Please continue to be a blessing to other sellers.
Jim B.
Jim B.
22:47 06 May 21
Rosenbaum, Famularo & Segall is HIGHLY recommended. We have benefitted from the firm's generous free advice in the past, and subscribe to the daily podcasts. Our recent experience has had to do with the selling of our e-commerce business.Nicole is awesome and so very eager to help. She is professional and knowledgeable, but more than that, her determination to find the right fit for resolving any issue shines right through the phone! Nicole put us in touch with Ashley and David who have (on very short notice) provided just the information we needed. We engaged them to be sure we (as sellers) are covered in any contract for purchase and/or transfer of inventory and IP/trademark rights. They delivered impressively!You can't go wrong here - these folks all really want to help and have a great track record of doing just that! (Jan & Jim Blue)
Amz T.
Amz T.
17:38 06 May 21
Thank you Anthony Zhang for your professional work. Anthony and his team helped us to deal with received IP claims on Amazon and to reinstate our account.These guys know how to deal with Amazon!I recommend you without a doubt!
ara O.
ara O.
21:45 10 Apr 21
I needed legal help and strategy for my trademarks. I was referred to the Rosenbaum firm from 'The Sophie Society' (who is a renowned marketing firm for Amazon global sellers/vendors). Marisol represented the firm well and was helpful & responsive. During our conversation she asked key questions to efficiently figure out the best course of action. I found her to be insightful and well versed in litigation of Intellectual Property. Would definitely recommend ~
aloha9881
aloha9881
03:32 08 Apr 21
I called Rosenbaum regarding an IP complaint at 8 pm PST which I didn't realize was already 11 pm at his time. He called me back within a few sec and gave me the best advice, I can’t get words for my appreciation.

Amazon Sellers' Guide to Trademark Law: watch & read more posts like this below:

Amazon Sellers’ Guide to Trademark Law

TABLE OF CONTENTS

Introduction

Purpose of this book ……….. iv

Firm Profile ……….. iv

Author Profile ……….. vii

Legal Disclaimer ……….. xi

Chapter 1: When Should a Trademark Be Pursued, and When Is it Best to Walk Away? ……….. 1

I. What Is a Trademark? ……….. 1

II. Geographic Zones ……….. 7

Chapter 2: The Filing Process ……….. 13

I. Introduction ……….. 13

II. Specimen and Declaration of Use ……….. 14

III. Examination ……….. 17

V. Continued Use ……….. 20

VI. Intent to Use ……….. 22

VII. Madrid Protocol ……….. 24

Chapter 3: How to Design a Trademark ……….. 29

I. Introduction ……….. 29

II. Distinctiveness ……….. 30

III. Acquiring Secondary Meaning ……….. 39

IV. Genericide ……….. 42

Chapter 4: Trade Dress ……….. 46

I. Introduction ……….. 46

II. Protectability ……….. 47

III. Trade Dress Categories ……….. 51

IV. Trade Dress Enforcement under the Lanham Act ……….. 54

Chapter 5: Likelihood of Confusion ……….. 58

I. Introduction ……….. 58
II. Confusion Among Consumers ……….. 62

Chapter 6: Fair Use of Another’s Trademark ……….. 70

I. Introduction ……….. 70

II. Classic Fair Use ……….. 71

III. Nominative Fair Use ……….. 74

IV. Classic and Nominative Fair Use ……….. 78

Chapter 7: Negative Associations ……….. 82

I. Introduction ……….. 82

II. Assignments in Gross ……….. 83

III. Dilution ……….. 87

A. Tarnishment ……….. 90

B. Blurring ……….. 92

Chapter 8: Protecting Trademarks Online ……….. 96

I. Introduction ……….. 96

II. Vigilance and Policing of your mark ……….. 96

III. The Legal Process ……….. 100

IV. Outcomes ……….. 101

V. Conclusion ……….. 108