So what do you need to know about trademarks? We compiled a list of six things every Amazon seller should understand about trademarks.
USPTO Trademark Registration Process
If you’re like most FBA sellers, you want to get an understanding of the overall picture/process before diving in…here it is.
A federal trademark can be procured by “clearing the mark” (ensuring that no one else is using the mark), filing an application with the USPTO, and paying the requisite filing fees.
The fee varies on the number of International Classes (“IC”) claimed in your trademark application. There are 45 classes in the international classification system, and choosing the correct one(s) is crucial to protecting your intellectual property rights..
For an outline and description of the 45 International Classes – check out our glossary of International Trademark Classes.
A USPTO examining attorney reviews your filed application and determines whether they will reject the application. They will reject applications that contain a mark that is not inherently registrable or if it is too similar to a prior mark or application.
If the examiner has no grounds for rejecting your application, then they will proceed to approve your application. However, before registering your trademark, the USPTO must publish your mark for opposition. During the opposition period, others may file an opposition proceeding, you must successfully defend the opposition proceedings or they must withdraw their opposition for your application to proceed to registration.
While some applications never see the light of day and are merely a waste of time and money, successfully registering your trademark provides you with the benefit of registering with Amazon.com’s Brand Registry, having more control over your listings, defending your listings from hijackers, and more.
The timeline from filing your trademark application with the USPTO and registering your mark may take from six to twelve months.
Spectrum of Trademark Strength
Trademark law in the United States requires that the mark be “distinctive” in order to be eligible for registration with the USPTO as a trademark. Examining attorneys will reject applications for marks that do not meet the necessary level of “distinctiveness.”
Generally speaking, the purpose of a trademark is to identify the source of the product. For example, if a product has the name Microsoft on it, then you would be able to identify the brand/source of the item. Furthermore, our laws prohibit the trademarking of generic and descriptive terms because the general public and your competitors should be able to use these terms/words to describe their product.
If you have not yet selected a brand name for your Amazon Private Label brand, then consider choosing a brand name that falls into the Arbitrary or Fanciful categories.
Here are the five levels of strength of trademarks.
The mark is a common product or service name.
For example, KNIFE for a knife product. Or LAWYER for legal services.
These types of marks are not protectable or registrable with the USPTO.
The mark describes a product or service, or a characteristic of the product or service.
For example, LONG LASTING BATTERY for a battery. Or SPEEDY for a delivery service.
These types of marks are not protectable and only registrable with a showing of “acquired distinctiveness.”
The mark suggests an attribute of a product or service without solely describing it. The consumer must exercise imagination to determine the nature of the product or service.
For example, NO TEARS for a garlic peeler. Or ACOS BULLY for a software that helps optimize Amazon PPC.
These types of marks are generally protectable and registrable, although they are weak marks.
The mark is a real word but one that is used in a way that is not connected to its common meaning.
For example, TESLA for automobiles; or APPLE for phones and computers.
These types of marks are almost always protectable and registrable. Trademark law considers these marks as strong.
The mark is a made up word or phrase.
For example, CISCO for networking equipment or ESQgo for legal services.
These types of marks are most protectable and registrable. Trademark law considers these as very strong.
Use In Commerce vs. Intent To Use Trademark Applications
The two main application basis for Amazon sellers are the Use-In-Commerce and the Intent-to-Use.
In order to complete the Use-In-Commerce application, you need to provide the date of first use in commerce. Now, if you already have your mark on your private label product and have been selling it on Amazon, Shopify, or any other e-commerce platform, then you would not need to worry about the Intent to Use Application.
However, if you have not yet used your mark but intend to use it in U.S. commerce within the next several years, then you could take advantage of the Intent-To-Use trademark application.
Historically, medical and pharmaceutical companies used this type of application since they invested a lot of capital into their product and needed to procure the trademark before they actually started using the mark in commerce. Nowadays, tech startups also utilize Intent to Use applications.
The filing of this type of application with the USPTO allows the applicant to reserve the mark for future use prior to launching their product or service. The filing date of the application is deemed the constructive first use date, providing the applicant an earlier date on which to rely for priority purposes.
Once the application is filed, the applicant will need to provide a specimen of use and file proof that they are actually using the mark before the registration can mature. The USPTO allows up to three years for the applicant to prove that they are using the mark in commerce, assuming that the applicant files an extension every six months. Failure to file the appropriate extensions results in the forfeiture of your application.
Prior Trademarks vs. Your Mark
When you submit your trademark application to the USPTO, an examining attorney will perform a search of the USPTO database for existing registrations and pending applications for prior similar marks. The examining attorney will reject your application if he finds any similar marks.
The test is whether a typical consumer is likely to be confused that the respective goods/services originate with or are sponsored by the same party (based mainly on the similarity of the marks in sound, sight, or meaning and the degree of relatedness of the goods or services.
In order to prevent the application from being rejected which results in the loss of your filing fees (usually around $275) and time; we highly recommend that you conduct a comprehensive search to ensure that your mark is not similar to any prior marks or applications. We consider the comprehensive search to clear the mark as the “x-ray before the surgery.”
Using Your Mark In a Trademark Manner
The USPTO will reject your mark if it is not used in a trademark manner. For example, the mark AMCO CORPORATION would be an unregistrable “trade name” if, in fact, that is the company name of the applicant and it appears on the required specimen of use only above the applicant’s address. Terms used as model numbers or grade designations, usually following another trademark, are also unregistrable.
United States vs. Foreign Jurisdictions (First-to-use vs. First-to-file)
In the United States, we acquire trademark rights from using a mark, and registration confirms our rights. In other words, you have trademarks rights without registering your trademark. The individual or company that uses a mark before another’s use or application, obtains rights in that mark, regardless of whether that first user ever pursues a registration. Therefore, the United States is a “first to use” jurisdiction.
In most foreign countries, filing your trademark application with the national trademark office or, in the European Union – with the central EUIPO usually establish your trademark rights. These foreign countries are “first to file” jurisdictions. In such jurisdictions, individuals or a company using a mark without filing a trademark application will not be afforded rights in the mark.