Oct. 9, 2024

This paid piece is sponsored by Woods, Fuller, Shultz & Smith PC.

By Joel Engel III, shareholder and trademark attorney 

Amazon is the second biggest retailer in the United States, behind only Walmart, and its online marketplace drastically has changed how businesses market and sell their goods to customers.

While Amazon has undoubtedly created new opportunities for American companies, it also has increased competition from global sources with consumers now directly purchasing goods from previously unknown brands located abroad.

As Amazon has evolved, it has attempted to address concerns from sellers and consumers regarding counterfeit goods and trademark infringement.  Established brands objected to selling their goods on Amazon unless it took steps to prevent the sale of such counterfeit goods.

To combat infringement and counterfeits, Amazon launched its Amazon Brand Registry in 2015, with newer versions and capabilities following in 2017 and 2019. The Amazon Brand Registry now has a variety of benefits, including additional brand protection tools to prevent unauthorized use of a brand name. With hundreds of thousands of sellers enrolled in the Brand Registry, ranging from major brands like New Balance and Levi’s to numerous small businesses, it is clear the Amazon Brand Registry has become incredibly popular with both foreign and domestic sellers.

The primary prerequisite to enroll in the Brand Registry is to have a valid trademark registration from the United States or certain other countries.  However, in 2023 Amazon made all sellers eligible as soon as they had a pending U.S. application. Consequently, the Amazon Brand Registry has created a strong incentive for sellers to apply to register their trademarks in the U.S.

This incentive, along with the notable increase in applications filed by Chinese companies, has contributed to the drastic increase in trademark applications filed over the past several years. This increase has led to longer examination times, which means businesses now are waiting over 14 months to get their trademark registrations, as opposed to just over nine months back in early 2021.

While obtaining a federal trademark registration always has been the gold standard to protect a business’ name, logos and brands, the Amazon Brand Registry has made applying for a federal registration more important than ever.

For businesses that sell goods on Amazon, having a federal trademark registration is required to enroll in the Amazon Brand Registry to unlock the brand protection features and obtain greater control over product listings.

Even for businesses that do not sell goods on Amazon, the rush by sellers to file trademark applications has created an even more crowded federal register. If a business waits too long to apply, it may find that its name or brand already has been registered.

The creation of Amazon’s Brand Registry and Amazon’s requirement for a valid trademark registration to enroll has had a number of unintended consequences. But for better or worse, Amazon is not going anywhere. Smart businesses will develop strategies to ensure they protect their intellectual property, and this strategy should include a proactive approach to registering their trademarks in this new era.

If you have questions about protecting your trademarks, Joel Engel at Woods Fuller can help.