On the show today, we will be returning to the legal side of Amazon. We have Rob Segall and Travis Stockman from AmazonSellersLawyer to talk about intellectual property protection.
Intellectual property is something that is created in the mind of an individual. In terms of a copyright, it’s considered a creative form of expressions such as a book or a poem. It instantly becomes copyrighted on its creation in the US. A trademark is used to identify the source of a product. You get a limited monopoly when you develop a brand that associated in the minds of consumers, such as the Nike swoosh. With patents, it’s a limited monopoly for an invention or process.
In order to take advantage of intellectual property protection, you first need to understand the kind of intellectual property protection you’ll have as a seller. Your Amazon listing would be considered intellectual property. If your bullet points and product detail page is an original form of expression, that would be intellectual property. Any creative form of original expression in a tangible medium is considered intellectual property and is protected by US law.
Trademarks are a bit different. If you just put your item up on Amazon, you’re not immediately granted protection for the trademark. The point of trademarks is to identify the source of the product and to protect consumers from being misled as to the authenticity of the product. Usually, you’ll need to show secondary meaning or use of the mark in commerce in order to acquire trademark rights.
There are two types of trademarks. Common law, which was based on English law, and Federal trademark right which requires registration with the United States Patent and Trademark Office. Common law rights could be established by putting your logo on a product and using it in commerce. If you were to register it, you would immediately have proof of validity. If you only have common law, you would then have to argue that you have established the trademark.
If you plan on registering your trademark, consider creating a unique name. Take Kodak for example. Kodak is a made-up word which makes the case stronger for a trademark because there won’t be any confusion. However, something like Mike’s Coffee Mugs would be much more difficult to register because those words are descriptive, generic, and commonly used.
If you plan on registering your brand name as well as logo then it would be two different registrations. The name would be registered as a name mark and the logo as a picture mark. A name mark has nothing to do with how it looks, simply how it’s written. Name marks are stronger than picture marks because they strictly identify the brand and less opportunity to argue confusion.
Picture marks are important because they offer more protection for your brand. Think of the Nike swoosh which is probably one of the most valuable trademarks in the world. Keep in mind that picture marks don’t provide as much protection on Amazon. With Amazon’s new Brand Registry 2.0, they require a word mark registration in the country you are selling.
The fees can vary. The USPTO calculates its fees on a per-class basis. They can range from $225 to about $300. If you are filing in three class, you would have to pay three different fees plus the cost of the law firm.
In the US, there are two types of patents. The more common is called a utility patent which protects the function of a product. The other is a design patent which protects the way a product looks. Utility patents are stronger on the Amazon platform. They are more easily enforced on the platform as they seem to be taken more seriously by Amazon. It’s much easier to argue the function of a product. However, utility patents are much more difficult and expensive to acquire. It would run in the tens of thousands of dollars to get a utility patent.
It is recommended that you file for intellectual property protection with the World Intellectual Property Organisation. This system allows sellers that have existing trademark protection in one jurisdiction to have it apply in other jurisdictions. You’ll want to extend your protection to the countries with manufacturing hubs.
If you are looking for more resources, be sure to have a look at my past interviews with CJ on other legal issues within Amazon.