Today on the podcast we have Anthony Famularo from Rosenbaum Famularo Lawyers, the Amazon Seller Lawyers. We are going to be discussing trademarks for Amazon.
A lot of people have fear around legal issues because they are important topics. Most of us either sit in worry or duck our heads into the sand because we don’t know what to do. To help with this in one area where many Amazon sellers have fear, Anthony is here today to talk about patents and trademarks for Amazon.
Anthony finds people generally understand copyright and to a certain extent, trademarks. However, the most common mistake he sees is people confusing trademarks with patents. People think that if they register their own trademark and private label their product that they are protected from patent law, but that’s not true. Trademarks are used to identify the source or quality of the goods and are often about the branding.
A patent is a government-granted right. It’s the right to exclude other people from advertising, offering for sale or importing your invention without your approval. There are utility patents and design patents. The utility patent covers what you would think of as an invention or the useful part of an invention. A design patent covers the appearance or ornamental, non-functional aspect of an invention. To get the most protection people will usually try to register both at the same time.
For copyright, you can’t copyright the idea. But if you put it into a tangible medium—whether you write it or record it—you can. Once it’s in that tangible medium you can protect it by registering a copyright. With a patent, you can protect the actual use of it, and it can be the idea. If properly drafted it protects your idea for that invention or product.
Let’s say you are looking at a phone case that has a light on it to light up your pictures and make your selfies better. The use of the light on the phone case would be protected by a utility patent. Then the design patent could be used to protect the appearance of it.
One product can get protection from utility patent and design patent. Getting a design patent is much simpler in that it usually just has one claim. Usually is just illustrations of the product. It is much faster and easier to get protection for your products through a design patent. The utility patent is much more complex, much harder to define. It’s harder to find it there’s already a patent that exists and then if there isn’t. It’s harder to construct your own application for it.
Anthony recommends looking into this for new private label products before spending money on manufacturing. The first step is to do a clearance search.
Start with your own research via the United States Patent and Trademark Office at uspto.gov where you can search for patents and trademarks. That is the starting point in terms of doing your own research for your trademarks for Amazon.
Your own research will help you to identify whether or not you should have a cursory or preliminary search done. If you do, and that preliminary search is successful then you can make a business decision as to whether or not to make sure before you go any further. That’s when you do a more extensive search. At that point, Anthony says you have to hire someone to make sure because you need to find out early whether or not it’s worth it to go further with your private label product.
Anthony advises even if you can’t afford a comprehensive search, have at least a preliminary search done. He recommends spending a little bit, under $1000. It’s worth that investment and everyone should do that at least.
You have to weigh up for yourself the risk vs reward. People want to put in $3000 and get out $10,000, but the reality is you could put in $3000 and end up with $0 if you go really wrong. Be aware of the possible downsides as well as the upsides.
One common mistake is private label sellers not taking all the steps to protect their own rights before they begin. Such as not registering their trademark. Trademark rights are based on first use not first to file but you never want to have to try to fight for your trademark later and prove that although they filed it first you were using it first. So don’t wait too long to register their trademark.
Another mistake is that people start offering their own invention and putting it out into the public without protecting it patent-wise. In terms of private label, if it’s already out there and it hasn’t been protected, technically nobody else should be able to protect that because if it’s already in the public domain it shouldn’t be able to be patented.
We see a lot of invalid complaints on Amazon. Competitors putting complaints through to you that just don’t have a valid basis. If you haven’t done your research before hand then you will have to scramble to determine the validity of that complaint. Do a little bit of work in the beginning because it will pay dividends further down the line when you get future complaints.
If you do get a complaint, Anthony recommends seeking legal counsel. With patent infringement, the burden is on the person claiming it. Every claim in the patent has to be hit for it to be an infringement. If there is one point of difference, it just doesn’t apply and there’s no infringement. That’s the most common defense and if you get a complaint, have someone give a quick analysis to reply on those grounds (if that applies to your situation of course).
If you are selling in on the US Amazon site and you get a complaint through there, Anthony’s advice is that you need an American lawyer. Since the sales are happening in the US and it’s the Amazon US store, US law is going to apply. So you need an attorney that’s qualified to interpret US law, one that’s admitted to practice in the US.
The packaging or appearance of a product’s packaging can be trademarked but doesn’t fall under patent law. Specifically, it’s called Trade Dress. It’s similar to a design patent, which covers the appearance of the actual object or invention. Trademarks are used to identify the source or quality of goods, whereas Trade Dress is the visual appearance of the product or brand. Generally, packaging is part of trademark law, but it has to have secondary meaning. So you can’t register a Trade Dress application until you’ve already been using the product. It has to acquire secondary meaning because it’s not going to identify the source of the goods or services until you’re actually using it to do that.
You can register the name of something as a Trademark before you use it. However, if you were going to try to protect the packaging with the image or any particular color schemes, you can’t register that until you’ve used it and developed that secondary meaning.
While you do get the rights to intellectual property on first use, you still need to register it to protect it further and save yourself time and hassle down the track. If someone shows up and starts using your mark, and you have the registration documentation, then you can just submit it to Amazon without the burden of having to prove and defend it. Having the USPTO registration makes it easier and simpler to police your brand. Plus, many websites, Amazon included, often won’t act until you have that documentation so it’s worth it to have.
You have to register your mark for each class of goods that you want to protect. That’s where it can start to get expensive. In some cases, you will need to register your trademarks for Amazon in several classes. Each class has its own filing fee. It’s approximately $250 per class. You will pay more or less depending on how many classes of goods you think you need to register for. You can get more protection on use but even if you start and register just one class it can potentially offer you more protection if you expand into other products down the line.
Anthony predicts that it’s going to become more prevalent to hear about and have to be educated about the various intellectual property rights, responsibilities, and trademarks for Amazon. Private labeling is the future and people are going to need to be savvy in order to go ahead with their businesses and be protected. It will be much more important and at the very least there will be an increase in trademark registrations. On both sides, we’ll see more registrations and more complaints, which is a natural byproduct of it becoming more prevalent.
Remember that Amazon is very quick to shoot first and ask questions later. So anything you can do to make that process of getting your products reinstated as quick and easy as possible is really worth it.
Anthony’s main advice for sellers is to self-educate about trademarks for Amazon. There are lots of resources even just on the USPTO site. You have to know what you’re dealing with. Then you can know the base information, and know enough to spot issues, so you know what you need to consult an expert on. After that, do a clearance search for your own private label brand.