How and Why Amazon Sellers can Protect their Trademark Rights Overseas
By Rob Segal, Paralegal, Law Student, Future ASL Partner & CJ Rosenbaum, Esq.
Amazon, Intellectual Property and the Appeal Process
The Amazon platform seems to be on its way towards monopolizing the eCommerce industry. However, Amazon’s success did not come without headaches along the way; especially when considering legal issues. One of the most recurring issues in eCommerce today is intellectual property infringement. Countless Amazon Sellers are fighting either counterfeiters and /or false accusations of infringement on a regular basis, and the law is struggling to keep up. Luckily, there are extra precautions you can take as an online seller to help protect your rights.
Protecting Your Intellectual Property Rights, What Amazon Sellers need to know
There are three main types of intellectual property: Trademarks; Copyrights; and Patents. A trademark is “any word, name, symbol, or design, or any combination thereof, used in commerce to identify and distinguish the goods of one manufacturer or seller from those of another and to indicate the source of the goods.” 15 U.S.C § 1127. Trademark law serves two purposes, to protect consumers and to protect property. For example, the Nike swoosh, the M in McDonald’s, the way that Gucci writes is Gs, Apple’s picture of an apple with a bite taken out of it … these are all valid trademarks. As soon as you see the Apple, you know who made that product and you expect a certain quality. On the other hand, generic words, pictures of items that occur and exist in nature (like drawings of fruits on the packages of supplements) are not trademarks.
The consumer is protected because when a consumer buys a running shoe because it has the swoosh, they are assured they are getting the quality they expect.
The business or person is protected because the law provides remedies if and when someone takes the swoosh and puts it on an inferior sneaker.
Amazon Sellers and Private Label – Protect Your Brand
If you are an Amazon seller using private label or a brand owner, it is likely that you have your own logo. You should consider filing a trademark application with the United States Patent and Trademark Office to protect your logo … protect your swoosh.
Protect Your Amazon Brand against International Hijackers
It is important to remember that registering your trademark in the United States only grants you protection to enforce your rights here. However, as eCommerce is rapidly expanding around the globe, especially in India, China, Thailand, and Vietnam, enforcing intellectual property rights overseas can be difficult.
Fortunately, the United States Patent and Trademark Office has a system in place to help you register your trademark in multiple countries, simultaneously.
The Madrid Protocol: What Amazon Sellers Need to Know
The Madrid Protocol is an international treaty that allows a trademark owner to register their mark in any of the countries that have joined the Madrid Protocol by filing a single application (called an “international application”). The International Bureau of the World Intellectual Property Organization, in Geneva, Switzerland administers the international registration system.
As a result of “international registration,” the rights owner is protected in each member country they have registered in. Each country has their own rules and laws to apple and determine whether or not the rights have been infringed in its jurisdiction. For Amazon sellers facing counterfeiters or other infringers overseas, international registration allows you to bring the fight to other countries. While you cannot legally require someone to come to the United States to fight a claim, you certainly can take legal action within the country the infringer lives in.
Basic Legal Advice to Amazon Sellers
Clearly, Amazon is a great opportunity for brand owners and sellers looking to grow their eCommerce businesses. However, it is imperative to remember that doing business online creates more exposure for your products and ideas, which can often lead to counterfeiters and infringers looking to “piggy back” on your success.
Protect your rights, your brand, and your customers. It is no simple task to grow and maintain a successful Amazon Sellers account, so registering your trademark under the Madrid Protocol should be a consideration for any seller with their own brand. Consider the future of your business and be proactive so that if and when necessary, you will be prepared to fight infringers wherever they may be located.