Do you have what it takes to get on the Amazon Brand Registry? (Photo by Tima Miroshnichenko, courtesy of Pexels)

How E-Commerce Merchants Can Qualify for the Amazon Brand Registry

E-commerce has become one of the fastest-growing industries over the last decade.  Consumers are more likely to order items online from the comfort of their homes more so than in prior years.  While the number of e-commerce platforms and marketplaces has grown steadily, the most popular and famous platform and marketplace,  Amazon, has become more or less a household name. From a website selling books, Amazon has now become one of the leading e-commerce platforms for selling any and all types of products online. For an e-commerce merchant, getting their brand on the Amazon Registry and marketplace can be very lucrative (since each year, several billions of dollars in revenue are generated from sales via Amazon). While being on the Amazon Brand Registry is not a guarantee of success, it can catapult merchants in the right direction.  Therefore, it is unsurprising that many merchants desire to get their brands listed on Amazon.  However, the process of getting accepted into the Brand Registry can be confusing, frustrating, and time-consuming for small business owners and e-commerce merchants. This article will explain the process and provide insights into how a trademark attorney can make all the difference in helping you get started with the Amazon Brand Registry.

First off, What Exactly IS the Amazon Brand Registry?

To start - it is a good idea to discuss what the Brand Registry is and what it offers. It's a program offered and designed by Amazon that provides tools for brand owners and online merchants to safeguard their brand and improve their selling experience on the platform. The main aim of the Brand Registry is to create a safe and secure shopping experience for Amazon customers. This service offers benefits like enhanced search features, proactive brand protection strategies and greater control, by sellers, over their product listings. Additionally, it helps merchants and sellers combat others who are selling counterfeit products and unauthorized " copycat" copies. To join the Amazon Brand Registry, sellers must submit an application and meet specific criteria (including adhering to trademark laws). Let's delve into these requirements and explore how a trademark attorney can support you in this process.

The process of applying to the Amazon Brand Registry is accomplished online. But before you begin, it is a good idea to make sure that you have everything that you will need ready.  As you will see, the process is one where the advice, consultation and representation of an experienced trademark attorney can be a very wise investment and tool.

What is Needed - a Pending or Registered Trademark 

One of the first things you will need in order to be eligible, for enrollment in the Amazon Brand Registry, is a trademark. A seller or merchant must possess a pending application or registered US trademark. Now, for most sellers and merchants, the rules and process revolving around trademarks is likely a brand new adventure, which may feel daunting, especially if they are not familiar, with them. The trademark application procedure at the USPTO involves several steps and many technicalities that need to be strictly adhered to. If you make even a single error or mistake at any point of the process (even as simple as a typo or submitting the wrong paperwork), it is possible that your application will be refused. Statistically (according to the USPTO), only about a little more than half of self-filed trademarks are successful. Seeking assistance from a trademark lawyer can make the process much smoother and increase the chances of a successful outcome. A trademark lawyer will guide you through the process as follows:

• Assess the likelihood of success of Your Trademark: Before you even apply, an attorney can evaluate your proposed trademark to ensure it meets the stringent USPTO legal standards and has a good chance of being approved This is called a "Clearance Opinion." Part of the process will ensure that there are no conflicting registrations or common law usages of similar trademarks for similar goods or services that pose a risk to the chances of success.
• File and Prosecute the Trademark Application: Filing a trademark application involves various forms and understanding legal language. An attorney can manage this process efficiently, reducing the risk of errors that could delay your application. The trademark attorney will also prosecute your application on your behalf as attorney of record and handle any inquiries from the USPTO, or other roadbumps that arise.

While there are no guarantees that an application filed by an attorney will ultimately be successful, it is true that applications filed by trademark attorneys have a much higher success rate than those filed by businesses that are not represented by an attorney.   Most importantly, if there are any flaws or problems with a chosen mark, an experienced trademark attorney will spot them and try to correct them before the application is filed.  In this respect, a Clearance opinion reveals not only risks posed by existing trademarks, it also may reveal strategies that were successful (or not) in other instances, so as to provide valuable information for purposes of fine-tuning the trademark application before it is filed. Further, as you will see, a trademark attorney makes the verification process for the Amazon Brand Registry much easier to fulfill.  

Where Do I File a Trademark?

Though trademarks can be registered at either the State or Federal level, for Amazon Brand Registry purposes, you'll need to file your trademark application at the Federal level, namely with the United States Patent and Trademark Office (USPTO). A trademark attorney can guide you through the complexities of the USPTO application process so you can focus on growing your business.

Trademark applications can be filed online at the USPTO website, so long as the submitter is a verified and registered user. The TEAS system is the portal at the USPTO that generates the application forms, submits specimens, and submits filing fees along with a sworn declaration.

One of the advantages of using a trademark lawyer is that they will prepare and file the application on your behalf, and thus ensuring that everything is filled out correctly.  Another advantage is that a trademark attorney will know timeframes and deadlines that arise, if the USPTO issues an office action.  A trademark attorney will know the best way to deal with any such office actions, and will thus spare you additional headaches later on in the process.

What type of Trademark does Amazon require?

Amazon requires that your trademark include text (ie. be a wordmark), or a logo that contains letters or text (ie. a literal element) as opposed to solely a logo or design. A trademark attorney can help you choose a strong, text-based trademark that will be readily accepted by the Amazon Brand Registry.  Among the important criteria to keep in mind, the USPTO will not register marks that are merely descriptive or generic in nature.  Likewise, they will not register marks that contain the name of someone who has not provided written consent for its use.  Most importantly, a trademark needs to be unique and cannot conflict with another trademark that is pre-existing, for the same or similar goods and/or services.

Proof of Use in Commerce

At the USPTO it's necessary to show evidence of using your trademark in commerce. This could include photos of your products, sales records, or marketing materials. While you can commence an application on an "intent to use" basis, you will need to provide proof of use before that application can mature to a registration. A trademark attorney can:

• Help Collect Specimens as Evidence: Ensure that the samples or "specimens" you have chosen to submit comply with the requirements of the USPTO to prove your trademark is in use in commerce. Specimens typically will consist of photographic proof that the trademark or brand is used as a source indicator for the goods or products being sold.
• Prepare Proper Submissions: Submit the specimens or proof in the correct format, and respond to any questions or concerns by the USPTO.

Proof of a Pending USPTO Trademark Application or Registration Needs to be Provided to Amazon

Every new trademark application filed at the USPTO Trademark Office gets assigned a unique serial number. That serial number sets it apart from the many other applications that get filed each day, and will track with the application through the rest of the process.  After being filed, your application will be placed in a queue with other applications, for eventual review by a USPTO examiner (which may not occur for as many as 7-9 months). The process of trademark approval can be lengthy - taking months for examination and over a year for a final decision, due to the backlog that has been experienced in the past several years (since more trademarks have been filed than ever before). However, all you need at this stage is the serial number of your pending USPTO application to apply for the Amazon Brand Registry. Likewise, for an already registered US trademark, you will have a serial number and registration number. When you apply to join the Brand Registry Amazon will conduct a search in the USPTO records, and reach out to the attorney of record listed on the application or registration to verify your ownership of the trademark or brand. This interaction with the trademark attorney is crucial as it allows you to confirm with Amazon that you are indeed the owner of the trademark or brand, in question. An experienced trademark attorney will be familiar with the Amazon process, and likewise will give Amazon confidence that you are the actual owner, thus making the verification process painless and smooth.

Amazon Seller or Vendor Account

To join the Amazon Brand Registry, you must have an active Amazon Seller Central or Vendor Central account. If you don't already have one, a trademark attorney can guide you through the setup process and ensure everything is in order before you submit your Brand Registry application.  You will then also need to apply for that account to be accepted into the Brand Registry.

No Fee to Apply

While there is no fee to apply to the Amazon Brand Registry itself, there are fees and costs that are associated with filing an application with the USPTO Trademark Office. Since you will need to have at least a pending application for a trademark in order to be considered for the Amazon Brand Registry - that means that you have to have those fees and costs in mind.  Even if you are filing a trademark application on your own (ie. without an attorney), the USPTO will charge you a filing fee for each class of goods/service that you seek to protect with your trademark. Figuring out the appropriate classes that sufficiently protect your goods/services is something that a trademark attorney can assist with, ensuring that you are maximizing protection and also keeping costs down. 

Obviously, if you hire an attorney to assist you, then you will have added costs in the form of the fee charged by the attorney for the legal services they provide. However, it is good to know that many law firms (such as our own) offer flat-fee trademark services, making it easier to budget for these essential expenses.

Benefits of Having a Trademark Attorney Assist You

Engaging an experienced trademark attorney to advise and represent you during the process of applying for a US trademark provides many benefits for e-commerce merchants and small business owners.  These benefits make it a worthwhile investment to hire a lawyer.  Among other things, these benefits include:

• Experience: Trademark attorneys deal with the USPTO every day and likely have assisted hundreds of other clients with the process. As a result, Trademark attorneys have a very good grasp of trademark law and can guide you through the application process more effectively than many business owners.
• Time efficiency: A trademark attorney can manage the process, freeing you up to focus on your business. Likewise, if you make a mistake in filing for a trademark or do not know what to do during the USPTO process (for instance - responding to an Office Action), your application can be denied. If denied, your only option is to file again and start from scratch (i.e. another year-long process). Hiring a trademark attorney helps to ensure that you complete the process the first time around.
• Peace of Mind: Knowing that a professional is handling your trademark application can alleviate stress and increase your confidence in a successful outcome.

Since your brand is the most important aspect of your business, it is a very good idea to maximize the chances of a successful application and registration of your trademark, by hiring an experienced trademark attorney.

Conclusion

In summary, getting through the Amazon Brand Registry application process may seem complicated, but it doesn't have to be! Having a trademark attorney, by your side can be incredibly helpful in finishing that process smoothly and successfully. They can assist you with filing your trademark application and ensuring that all the necessary criteria are fulfilled. A trademark attorney can likewise make the verification by Amazon go smoothly. By utilizing the knowledge of a flat fee trademark attorney you can safeguard your brand AND get started on Amazon. Make the most of the opportunities provided by the Amazon Brand Registry. It's crucial for any Amazon seller to have their brand and listings safeguarded.

Ready to begin? Reach out to a trademark attorney today. Take that step towards protecting your brand and boosting your presence on Amazon.  Remember that our office provides FREE initial consultations to potential clients for trademark matters.

We are experienced in Trademarks - Contact us today!