Amy Sullivan Cahill, August 2017
Last month, Amazon began rolling out its newly revamped brand registry. The objective of the new registry is to encourage sellers who use the Amazon marketplace to register their own trademarks with the USPTO. Currently, only brands that own a federally registered trademark are eligible to join the Amazon registry. The trademark must be a “standard character mark” (word(s)) and the trademark must match the brand name printed on the relevant products and/or packaging.
Amazon’s updated brand registry is the most recent example of an online marketplace providing more tools and incentives to sellers to register their intellectual property with the U.S. Patent and Trademark Office (USPTO). The practical purpose of a registration requirement is to define clearly the intellectual property in dispute. In addition, federal trademark registration with the USPTO provides a number of legal benefits to applicants, including:
- The right to use the ® symbol to notify third parties the mark is federally registered;
- Constructive use of the mark as of the date of filing the application
- The presumption of exclusive nationwide rights in the mark in connection with the goods and services identified in the registration;
- Right to record the mark with U.S. Customs & Border Protection to be used to prevent the importation of counterfeit goods.
- Prima facie evidence of the facts contained in the registration, including ownership and validity. validity of the registered mark, of registration of the mark, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the registered mark with the goods and services set forth in the certificate;
- The ability to “cut off” the rights of even earlier users after the registration remains unchallenged for five years.
Now that the behemoth that is Amazon is incentivizing sellers and brand owner enforcers to secure federal trademark registration, it is becoming increasingly clear that registration is not merely a luxury. If you have a brand that is important to your business but have not yet registered with the USPTO, we are happy to discuss the registration process without cost.