The Amazon Brand Registry – Now Bigger and "Badder?"

Intellectual Property
November 23, 2020
 

Amazon recently made a change to the enrollment requirements for its Amazon Brand Registry program that will help those who wish to avail themselves of the benefits of the program to enroll more quickly. Unfortunately, this change also creates significantly more opportunity for the program to be used in ways that could disrupt legitimate commercial activity.

The Brand Registry program is promoted by Amazon as a way for brand owners to help build and protect their brands in the ever-burgeoning Amazon online marketplace. The registry is available to sellers who manufacture or sell their own branded products through Amazon. Manufacturers can enroll their brand in the Amazon Brand Registry and register themselves as the brand owner. Amazon in turn provides enhanced reporting and intellectual property enforcement tools to those brand owners who register their brands on the registry. The enforcement tools provided are extrajudicial in nature: The brand owner does not need to go to court to get relief. As a result, these tools can have a much more immediate marketplace effect without the costs typically associated with seeking relief through the courts. The Amazon Brand Registry program became much more significant to the Amazon selling community when the program was relaunched and strengthened in 2017, and, in light of the new change in enrollment requirements, it is likely to become even more influential.

Until recently, a company seeking to enroll its brand on the Amazon Brand Registry needed to have a registered trademark in one or more of certain jurisdictions – the United States, Australia, Brazil, Canada, the European Union, France, Germany, India, Italy, Japan, Mexico, Netherlands, Saudi Arabia, Singapore, Spain, Sweden, Turkey, the United Arab Emirates or the United Kingdom. This registration prerequisite served as a low-cost (to Amazon) gatekeeping function by offering Amazon some baseline level of assurance that those enrolling were entitled to the brand protection they sought without requiring Amazon to do any meaningful due diligence about the legitimacy of enrolling brand owners’ rights vis-à-vis third parties. Whether intended or not, because of the time and cost entailed in securing a trademark registration, the registration requirement also prevented brand owners that lacked or were unable to obtain registrations quickly enough or at all from availing themselves of the registry. This leaves them and others vulnerable to the very counterfeiting and other infringement problems that the registry was intended to combat.

Without any noticeable fanfare, Amazon recently relaxed the Brand Registry enrollment requirements by allowing brand owners without trademark registrations to enroll on the registry. Under the new rules, brand owners can register a brand based on a live, pending application to register the brand in the United States, the United Kingdom, and (at least for now) a few more of the foregoing jurisdictions where registrations were previously the minimum requirement.

What does this mean for brand owners? On the positive side, if brand owners want or need to get their brand enrolled on the Amazon Brand Registry but do not already have a registration from the U.S. Trademark Office, they no longer have to wait the many months or even years it can take for an application to mature into a registration. Instead, now all they need to do is file a trademark application for registration on the Principal Register, and they can then apply to Amazon for enrollment on the Brand Registry. Those with applications pending that were awaiting registration before enrolling are now immediately eligible to enroll. Among other benefits, this allows for a faster online marketplace introduction for new brands.

However, lowering the bar for enrollment greatly expands the number of possible enrollees that have not yet established, and may never establish, enforceable trademark rights. In the U.S., the vast majority of applicants for trademark registration cannot get a registration until they prove to the U.S. Trademark Office that their mark is actually in use in commerce and the mark is found to be suitable for registration after examination. Many of those applicants will ultimately fail to get a registration due to a lack of proof of use in commerce or due to a refusal by the Trademark Office. As a result, the old registration requirement provided at least some reassurance that an enrollee had enforceable rights in the registered brand. By shifting to a requirement that an enrollee merely has applied to register their brand, Amazon has essentially abandoned any meaningful gatekeeping. This opens up access to its powerful extrajudicial trademark enforcement tools to those who have not actually established, and may never establish, any enforceable trademark rights. While it is likely that many applications for the Amazon Brand Registry will be made in good faith, there will likely be some applicants, possibly many, who exploit this change in enrollment requirement to register brands with Amazon in an effort to disrupt legitimate commercial activity in the Amazon selling community.

For example, brand owners with enforceable trademark rights may have their products delisted by Amazon based on complaints from Amazon Brand Registry enrollees whose rights are not valid and/or enforceable against the delisted party. While this potential for disruption existed under the old rules, the registration requirement had a significant dampening effect. Under the new rules, the number of potential enrollees is greatly expanded, and since those enrollees are no longer required to have even the bare minimum evidence of enforceable rights, the opportunity for potential abuse of the registry is increased dramatically. As a result, the online selling community that some have characterized as the “Wild West” just got significantly wilder.

If you are interested in exploring how your business might benefit from having one or more of its marks enrolled on the Amazon Brand Registry, or encounter any problems with Amazon as a result of other parties' use of the enforcement tools available to those already enrolled, Calfee is ready to assist you.


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