Antoinette M. Tease Montana Patent
 Intellections® March 2018 
Online Retail Platforms Offer Swift Justice in Trademark Infringement Cases

Let's say you develop a product (the coolest backpack ever), register your trademark ("Larkspur Designs"), and hit the market. Two months later, you discover that some other company (seller name: whodunit) is selling "Larkspur Designs" backpacks on Amazon—they are using your product photos, but you do not know whether they are reselling your product (presumably obtained from one of your distributors) or using your brand to sell an inferior product. You order one of the backpacks and discover that, although the packaging is virtually identical to yours, the product is not yours. You cannot find any contact information for the seller either on Amazon or anywhere online. What next?

You may consider filing a copyright complaint with Amazon based on whodunit's use of your product photos, but if those photos are not registered with the U.S. Copyright Office, you cannot pursue an infringement claim. You cannot send a cease and desist letter because you have no contact information for the seller. What you can do is file a trademark infringement complaint with Amazon. Amazon will review the complaint and, if it appears to have merit, take down the infringing product listing. Amazon will not reinstate the product listing unless the trademark owner retracts its complaint, which can only be done if the complaint was filed in error.

Amazon has recently implemented a "brand registry" that is intended to expedite the process of removing infringing product listings. To register a brand with Amazon, a company must manufacture its own products, and the brand name (trademark) must be registered with the U.S. Patent and Trademark Office. In addition to proof of trademark registration, brand owners are required to submit the brand logo (that is, the stylized version of the trademark), an image of the trademark on the product or packaging, and a list of countries in which the product is manufactured and sold. The brand registry gives sellers greater control over their product descriptions, a more visible platform for promoting their brands on Amazon, and (in theory) faster resolution of disputes against infringers.
All trademarks registered with Amazon must include a literal element (i.e., one or more words); however, infringement complaints may be filed based on trademarks that are not part of the brand registry. For example, trade dress—which refers to the shape or design of a product separate and apart from any words—can be registered with the U.S. Patent and Trademark Office even though it cannot be registered with Amazon. For this reason, we encourage our clients to pursue trade dress protection in addition to or in lieu of design patent protection. (Amazon will not remove product listings based on a patent infringement complaint, but they will remove product listings based on a copyright or trademark complaint.)

The brand registry is not without risk, however. When Amazon receives a request to join the registry, it sends an email to the correspondence address on file with the U.S. Patent and Trademark Office for the registered trademark. This email contains a code that the trademark owner then uses to control its brand registry account (appoint administrators, etc.). Sophisticated infringers have begun changing the correspondence address in the USPTO records so that when the brand owner adds a trademark to the Amazon brand registry, the infringer will receive the email with the verification code. These email addresses are often from a secure private email domain so that the originator cannot be identified. One way to protect against this scam is to check the correspondence address for your registered trademark before adding it to the Amazon brand registry.

Amazon is not the only online retail platform that will remove infringing product listings based on a complaint submitted by the trademark owner. Sites such as Apple, eBay, Etsy, Jet, Bonanza and a myriad of others have similar takedown procedures. Review the site's legal terms and conditions for details on how to submit a complaint. The development of a strategy for combatting infringers via third-party retail platforms can be particularly effective where the infringer is uncooperative (for example, in response to a cease and desist letter) or where it is impossible to identify the infringer.
Patent Law for the New West ®  
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© 2018 Antoinette M. Tease, P.L.L.C. All Rights Reserved.
 
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