Brand Protection on Amazon
As a law firm, our team stands up for sellers against baseless IP complaints and obtains withdrawals. When Amazon refuses to reinstate accounts or release sellers’ money, Rosenbaum Famularo, PC takes Amazon to arbitration. As Amazon sellers pivot into creating their own private labels, our team helps sellers with everything from filing trademarks to protecting brands from counterfeiters. We have tremendous experience with rights owner complaints and intellectual property law as it pertains to Amazon sellers.
Listing hijacking is a phenomenon that every seller, big or small, should be aware of and actively seeking to prevent.
Sellers who are unauthorized to sell a brand’s product but pop up on those listings and attempt to sell are called “hijackers”.
Monitoring your brand’s ASINs frequently will help alert sellers to deal with hijackers more quickly and efficiently.
Hijackers may be selling counterfeit products, infringing products, or inauthentic products.
Each category is equally important to prevent, from a seller’s point of view, however they are treated differently by Amazon. Inauthentic goods are not strictly defined by Amazon; but one thing is certain, these products are not necessarily counterfeit. Generally speaking, Amazon uses the term “inauthentic” for goods they believe may be from the gray market. Those are goods that are potentially procured from unauthorized channels of trade. As Amazon uses the term, inauthentic goods are defined by the place of purchase by the seller. That is to say, items that are purchased outside of the legitimate stream of commerce may be flagged by the purchaser.
Our ASIN monitoring program uses a sophisticated monitoring software that gives us updates twice daily. We have the capability of monitoring numerous ASINs for many sellers simultaneously. The status of each ASIN is reported and further reviewed by one of the many dedicated team members at Rosenbaum Famularo, P.C. We review this data twice a day to ensure that we have the maximum amount of information to protect you from hijackers.
Keep in mind that Amazon is a global platform. Anyone from anywhere in the world may be joining a listing and selling cheap, inauthentic goods at some one else’s expense. The reason we are able to help as many brands remain as hijacker-free as possible is the frequency with which we check listings.
If sellers decide to undertake this massive and time-consuming job themselves, do the sweeps as frequently and thoroughly as the business is capable of.
The test buy is a necessary part of brand protection.
Why is this step so crucial? Without the test buy, neither sellers nor anyone on our staff, can properly evaluate if the product in question is in fact counterfeit, infringing, or inauthentic.
We advise that test buys be conducted before contacting us, as it will save time, thus accelerating the timetable for sellers to regain control of their listings. Once a seller has conducted the test buy, we ask them to send it to our office so that we may conduct our own evaluation.
Infringing or inauthentic claims are quite serious if they are leveled against any seller.
If the claim turns out to be unfounded, then a seller may lose several days of sales, or even lose selling privileges altogether. We take the ramifications of these claims seriously. As a result, we strongly encourage every seller to verify the product they claim is infringing with a test buy. If our evaluation concludes that the product is in fact infringing, inauthentic, or counterfeit, we will advise moving to the next step: sending a cease and desist letter to the infringing seller.
Cease and Desist Letters
Cease and desist letters are an effective way to put nefarious sellers on notice of pending action if they do not comply with the terms set forth.
We generally choose this as the next step because we take these matters quite seriously and do not wish to harm sellers on Amazon. In some cases, sellers are simply unaware that they are infringing on another brand’s rights. In others, sellers agree to the terms of the cease and desist letter without further issue.
A new policy that we have implemented is asking clients to pre-authorize certain actions in the event an affirmative response to the cease and desist letter is received. This saves time between waiting on responses to emails as the client already approved us to act. This helps get our clients back in control of their listings even faster. If no pre-authorization is given, then either the client is informed as soon as a response is received or, if no response is received, the time expires for the letter as is normal.
Cease and desist letters usually allow a two-business day time period for the recipient to respond. If an affirmative response is given by the possible infringing seller, then a contract is drawn up stating the terms of the agreement. If there is no response, or a response indicating the seller will not cease selling on that listing, then a report of infringement is generated.
Reports of Infringement
There are two courses of action taken after the test buy. We draft a report on our letterhead based on the inherent differences between the two products, warranty differences, any infringement of registered rights, and ask our clients to accordingly change the warranty information on both their website and the product detail page.
CJ Side Note: Remember, only sellers registered for Brand Registry 2.0 may change the product detail page. This is an incredible tool for private label sellers to take advantage of.
Once both the listing and private label websites have been sufficiently altered, a member of our team will submit the report on the client’s behalf. Reports are drafted by our team whose great deal of experience in drafting these documents, many times, leads to successes. Submissions to Amazon detail the infringing content, seller, and all attempts to resolve the issue prior to this submission.
Amazon is more responsive to reports of infringement if there have been attempts to resolve the issue with the other party. If the client has registered rights, then the document will argue the other seller is violating those rights. If our client has either a pending application for rights or merely common law rights, then the letter will assert their common law rights.
In order to make the strongest argument possible, we ask several questions to ascertain the extent of use for our client’s mark.
First, we ask when the date of first use of the mark in commerce was. This establishes the point at which common law protections begin.
Second, the number of products sold in the United States bearing the mark.
Third, the number of customers buying products bearing the mark in the United States. These points go to the strength of the mark among consumers.
Fourth, quantifiable evidence of marketing and or advertising expenditures. Large scale marketing campaigns may show the area which our client’s mark covers. When dealing with traditional, brick-and-mortar stores, geographic area is used to determine where the mark has protection. Protection is partially determined by the scope of advertising; the greater amount of advertising, the greater the area of protection is extended. Similarly, the more an e-merchant advertises and spends in advertising on the internet, the stronger the argument for common law rights.
Fifth, whether there are any links to websites using the mark in commerce. Links to other sites in commerce shows the penetration of the mark on the internet. The more links that take a customer to that particular product, the better. Additional questions may be asked if need be. If the client has a pending application, the links may be used to show the client’s good faith in usage of the mark. These questions help us determine just how to approach the report. If the initial report is not accepted by Amazon, we will revise and resubmit the document in hopes it will then be accepted.
Drafting Warrantee Language
Changing the existing warranty language, or drafting initial warranty language is an essential element of reports of infringement.
Warranties can be used to circumvent a rule known as the “first sale doctrine”. The first sale doctrine states that persons selling a product from an authorized retailer, distributor, or the manufacturer are not liable for selling infringing products if they are the first purchaser. However, there are exceptions such as differences in warranty.
The United States Court of Appeals for the Tenth Circuit held in Beltronics USA, Inc. v. Midwest Inventory Distribution, L.L.C. that warranties may be a point of material difference nullifying the first sale doctrine if the unauthorized seller is unable to provide anything the warranty states.
The test buy will reveal if there are material differences between the two physical products, however it is our belief that it is best to submit several arguments in the same report in order to increase the likelihood of success.
When deciding how to create a material difference between the two products we have several touchstones.
First, it is important to know that each warranty will be different product to product, seller to seller, and even between the same style of products.
This means every single warranty draft is unique to that product and seller combination. We use our knowledge of related products’ warranties to generate ideas about what may be included or excluded from the updated language. We also look to what may be common language among successful products in that category. Sellers must have the capability of fulfilling any warranty request made by the purchaser of a product. Therefore, it is imperative to know the capability of the seller.
Finally, we work with our clients to find something unique that only our client can deliver to incorporate in to the warranty language. This ensures that if someone tries to redeem a warranty outside of authorized channels of trade, a material difference will certainly exist. Again, this depends on the product; as something like shampoo will have a general warranty satisfied by all. This is why we always include language stating that warranties are redeemable only with proof of purchase from an authorized retailer.
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