This post is by CJ Rosenbaum, Partner and Managing Attorney at Rosenbaum Famularo, P.C.
At first glance, intellectual property law can seem a frightening subject for online sellers. But, in reality, it’s not as complex as you may think. In fact, there are just two main areas that sellers need to know about – developing and protecting their intellectual property rights.
The development of your intellectual property rights includes creating trademarks, understanding copyright, obtaining patents and designing enforceable trade dress. Once you’ve developed these, protecting your rights simply covers how to spot violations of your intellectual property and what to do about them.
In this article, we’ll cover all the basic information that Amazon sellers need to know about intellectual property law. We’ll look at the ways your listings and products are protected, how to enforce your rights and how to remove listing hijackers.
US trademark law for Amazon sellers
As soon as you see any of the logos in the picture below, you know what you are going to get. For example, when you see the Golden Arches, you know it’s McDonald’s and that the french fries will be awesome. That’s what a trademark is all about. It’s a unique combination of words and images that indicates what the product or brand stands for.
Sellers need to know at least the basics about trademarks in order to protect their brands and avoid violating the intellectual property rights of other sellers. The most important thing to remember is that you can’t copy or use another company’s mark or logo on your products. So for example, you can’t take the Nike swoosh and print it on your own t-shirt. That would clearly violate Nike’s intellectual property rights.
Developing your own trademark
There are good ways and riskier ways to go about developing your own trademark. One of the riskier ways is to use online freelance sites. It is common practice for these services to use other marks as a sample and they may even sell the same mark to multiple Amazon sellers. The issue with that is that you’re only going to find out further down the line, when you’ve been selling your products for a while, that there’s a problem with your mark.
A much better solution is to use a graphic designer to create the mark from scratch. It might be more expensive but this way you can be sure that the logo or trademark is original. Even then, never invest heavily in creating a mark without making sure that it doesn’t violate anyone else’s. If you’re unsure, you should check the United States Patent and Trademark Office (USPTO) and even get an opinion letter from a lawyer, stating that your trademark is okay to use.
Sourcing branded products
In the US, sellers have the benefit of the First Sale Doctrine. This law states that you do not need a brand’s permission to sell its products, as long as the products aren’t “materially different” from those sold by authorized sellers. So, if you buy a truckload of Starbucks mugs from a distributor that had excess inventory, as long as you don’t make any changes to the products, you are not likely to be violating anyone’s rights in the US.
Before you order a large amount of inventory though, do your research. You need to make sure that the stock is genuine and doesn’t violate another seller’s trademark or intellectual property. This can make sourcing from Alibaba a dangerous practice, especially if you’re selling on Amazon.
If you get an inauthentic claim made against you on Amazon, then you will have to provide supplier invoices for that stock. If these are from Alibaba, you’re dead in the water. In fact, we always say that if you’re suspended for an inauthentic claim, and have sourced from Alibaba, you need to get documentation straight from the factory instead. This will carry more weight with Amazon.
As a side note for UK sellers, while I am not yet a solicitor and cannot provide legal advice outside the US, it is my understanding that in the UK, brands do have the right to withhold permission to sell their products.
US copyright law for Amazon sellers
When it comes to US copyright law, there are two areas which online sellers need to know about: images and verbiage. Essentially, this means that you can’t use someone else’s images or cut and paste their listing text.
If you are creating a listing on Amazon or any other marketplace, you can’t use pictures, images or drawings that you did not create or purchase.
Many sellers make the mistake of using product images that the brand owns when they create a listing. But this is use of someone else’s images and, even if they were in the public domain, it is a copyright violation. Even you take someone else’s images and alter them, it’s still a copyright violation. So be safe and if the image belongs to someone else, don’t use it without their permission.
Where copyright law does become difficult, is that it differs depending on whether you created your own listing or connected to an existing one. This issue causes a real split in the US and different courts will often rule differently.
In certain areas of the US, if you are selling on a listing that uses someone else’s images, regardless of whether you created that listing, you would be seen as violating their copyright. In other states though, as long as you did not upload the offending image, you are not violating anyone’s copyright.
When creating your listing text, copy-and-paste is not the right way to go. You can’t just simply take the text from someone else’s listing and pass it off as your own. Copying someone’s listing text is one of the easiest copyright violations to spot and probably the hardest to defend.
So, yes, you can use other people’s listings as a guide but you need to change it and make it your own. You can say something that’s very similar and get the same message across, but don’t use exactly the same words. If you take these steps you should create listing text that doesn’t violate anyone’s copyright.
Copyright law also applies to the text used on your product’s packaging. If we take the product below, for example, the following parts of the label are NOT protected by copyright law.
- The name of the substance, “garcinia cambogia”, is not protected, as copyright does not cover the names of substances that occur in nature.
- The picture of the fruit is not protected, as anything that exists naturally is not covered by copyright law.
- The description of the capsules, “vegetarian capsules”, would also not be protected, as generic terms are not protected by copyright.
What would be protected on this product though, is the little leaf over the letter “i” in “naturewise”, as this is a unique part of their trademark.
US patent law for Amazon sellers: the basics
Patents are basically licenses issued by the government that prevent other sellers from offering your product. So essentially, the government comes along and says that because you invented the product first, you are the only one that can sell it for a set period of time. At this point, that’s it, nobody else can sell your product.
Design patents versus utility patents
There are two types of patents: design patents and utility patents. Both of these protect different aspects of the product. A design patent protects how the product looks, while utility patents protect how the product works.
Design patents are great tools for protecting the look of a product if it’s unique. However, it does little to protect you against other sellers coming up with improvements to your design and competing against you. If they alter the design, and there is no confusion between your product and the other seller’s improved product, there is likely to be no violation of your design patent.
Utility patents are far more powerful and offer much broader protection. If you have a utility patent, then it doesn’t matter if another seller changes the shape, color or texture of the product. If that product works the same way as yours, it violates your utility patent and they won’t be able to sell it.
US trade dress for Amazon sellers
Trade dress can be a hard right to identify but it refers to the whole concept of a product – how it looks and how it feels. This includes the shape of the product, the color and even the packaging that it comes in. It is pretty much any aspect of your product that makes it recognizable and differentiates it from other products.
Trade dress also has an extra benefit that not many people know about – it never expires. This means that once you have the trade dress for the look or feel of a product, you’re protected pretty much forever.
Examples of trade dress
A great example of trade dress is the Beauty Blender. Even though it is just a makeup sponge, the company have had great success in differentiating it from other sponges. The egg shape, the clear perspex packaging, the fuchsia color and the texture all make it unique. This entire look and feel is covered by trade dress.
Another example is Crane and their humidifier shaped like a teardrop. There are countless humidifiers on the market, but Crane have been very successful in protecting their uniquely shaped product. They are the only brand that has the trade dress for a teardrop-shaped humidifier.
Protecting your private label listings
When you sell private label products on Amazon your listings can be targeted by hijackers. Very often they try to take control of your listing by adding their own offering to it, even though it’s your product and they are violating your rights by selling it.
It can be very difficult to avoid being targeted by hijackers but there are steps that you can take to remove them from your Amazon listings.
1. Identifying hijackers
In order to remove hijackers you first need to identify them. To do this, you need a system. Now, if you have a limited number of ASINs, you can just manually check each of your listings. Go through them all on a daily basis and when you spot a hijacker, send them a cease and desist letter.
If you have hundreds of listings, then going through them manually is not efficient. Instead, you need an automated system. We use a proprietary system that monitors listings by both ASIN and brand. This software automatically identifies who is selling on each listing, and sends cease and desist letters to sellers that it deems to be hijackers. We also have the ability to prevent cease and desist letters being sent to sellers that have the brand’s permission to sell their products.
2. Removing hijackers from your listings amicably
As I mentioned in step one, after identifying the hijackers we always start by sending cease and desist letters. In our experience, we’ve found that it is much better to send a cease and desist letter and achieve an amicable resolution than remove the seller by force.
This avoids upsetting the hijacker too much and should lower the risk of them attempting to damage your brand out of spite.
3. Removing sellers who refuse to exit your listings
If after sending a cease and desist letter the seller refuses to remove themselves from your listing, the next step is to file a complaint to Amazon. You can do this by reporting the infringement via a simple form. You will need information such as the name of the brand and the ASIN of the offending product, and you’ll also be asked to explain the allegation that you are making.
Amazon takes these claims very seriously and will usually act by suspending specific ASINs or even their whole seller account. So think seriously before you report an infringement, and never make a complaint without a factual basis.
Key differences between the US, UK and China
The final thing that all sellers should be aware of are the basic differences in intellectual property law between the US, UK and China.
In the US and UK, intellectual property law is based on who is the “first to use” and “first to invent” products. Sellers or companies that fall under either of these branches are protected.
The big difference between US law and UK law, is that in the UK, brand owners have power to stop people, or companies, selling products simply because the sellers are unauthorized.
The law in China is very different to both the US and the UK, as there are no rules about first to invent or first to use – you have zero rights unless you register.
Unfortunately, registering in China is much more complicated than the rest of the world. Unlike most countries where 45 international categories are maintained, China has hundreds of sub-categories. I you fail to register in all of the categories relating to your product, someone else can register and sell under your mark.
Protect, monitor and take action
Protecting your intellectual property rights can take many forms. We always recommend that our clients file for protection from the USPTO and their local government office. Once they’ve obtained approval in the US, we strongly suggest that our clients also file with the World Intellectual Property Organization (WIPO).
If you’re seeking trademark or copyright protection, it’s important to remember that you can file on your own – you don’t need a lawyer. It can be a good idea to seek protection not just where you sell, but also where you source. This often means that sellers don’t just seek protection in the US but in China as well.
Finally, be vigilant and make sure that you’re always checking your listings for hijackers. It pays to prepared and not only have processes in place to catch them, but know what actions you can take to remove them.
This post was by CJ Rosenbaum, Partner and Managing Attorney at Rosenbaum Famularo, P.C.
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