The United States Patent and Trademark Office (“USPTO”) has proposed a new rule that would require foreign trademark registrants and applicants to be represented by a licensed U.S. attorney in order to file trademark documents with the USPTO. This rule was entered into the public comment period last November, a process that effectively puts the public on notice and allows members of the public to submit their feedback on the proposed rule change. This public comment period expires in February, with a final action to approve the rule change expected to take place in June, 2019. If approved, this new rule would become effective July, 2019. 

There are a couple of reasons behind this drastic change in policy for a Trademark Office that has traditionally allowed applicants and registrant to represent themselves pro se — one such reason is broader, and the other to combat a specific problem that has been plaguing the USPTO in recent times. 

Broadly, the USPTO states that this rule change has the purpose of ensuring that the USPTO can “effectively use available mechanisms to enforce foreign applicant compliance with statutory and regulatory requirements in trademark matters; provide greater confidence to foreign applicants and the public that registrations that issue to foreign applicants are not subject to invalidation for reasons such as improper signatures and use claims; and aid USPTO efforts to improve accuracy of the U.S. Trademark Register.”While it appears that this rule exists as a direct result of the recent influx of pro se applications filed by Citizen citizens, let’s tackle each of these listed reasons in turn. 

The autocratic Chinese government has been effectively subsidizing Chinese citizens’ efforts to obtain U.S. Trademarks registrations. Indeed, the Chinese regime will pay $790 to any Chinese citizen who successfully obtains a federal U.S. trademark registration. This has had the effect — whether intended or not — of encouraging Chinese citizens to obtain trademark registration in the U.S. by any means necessary, even if they do not sincerely have any interest in those trademark rights. While this may seem targeted directly at reducing fraudulent Chinese applications, this rule is actually in line with similar rules long in effect in Canada, Japan, and China. In the European Union, applicants may apply pro se, but must appoint a representative before or after receiving an Office action. 

The idea is not, necessarily, that a private U.S. attorney is more capable of spotting a fraudulent trademark application than an examining attorney at the USPTO. Indeed, the examining attorneys are quite adept at weeding out real from manufactured motives behind a given trademark application. Instead, this rule is seemingly aimed at increasing the judicial economy of the USPTO by decreasing the number of fraudulent applicants. If a Chinese citizen must pay to be represented by a licensed U.S. attorney, surely it would significantly impact the amount of the $790 subsidy they are looking to reap. Thus, the hope is that this added expense will make the process too expensive and cumbersome for all but the most sincere foreign applicants. Unless the applicant has a sincere interest in protecting his or her trademark rights in America, the process will be prohibitively not worth it, despite the government subsidy. 

The other major purpose behind this rule change is to help sincere applicants receive the best possible outcome at the USPTO. Indeed, a 2013 Sanford University study found that Applications filed pro se run a significantly high risk of being rejected than those represented by a licensed attorney. Pro se applicants, who don’t necessarily understand the nuances of trademark law, are susceptible to innocent yet damaging mistakes — for example, listing a far too broad laundry list of goods that they do not reasonably expect to participate in, thus opening any eventual registration up to challenges. 

There is still time before this rule goes into effect. However, if you have any questions about hiring experienced and licensed U.S. trademark attorneys to represent you in front of the USPTO, we would be happy to discuss with you further! Please contact Gugliotta & Gugliotta, L.P.A. here, by phone at (888) 298-8580, by email at trademarks@inventorshelp.com, or by mail at 55 S. Miller Road | Ste. 203, Akron, OH 44286.

Gugliotta & Gugliotta, LPA publishes this blog for educational purposes only, not to provide specific legal advice. By using this blog site you indicate that you understand there is no attorney-client relationship between you and the Gugliotta & Gugliotta, LPA. This blog should not be used as a substitute for obtaining legal advice from a licensed attorney. In addition, statements made on this blog represent the viewpoints of the individual authors, and do not necessarily reflect the views of Gugliotta & Gugliotta, LPA or any of our clients.

It’s a great time to be an Amazon executive and, more importantly, an Amazon seller. 

With its recent quarterly earnings report, Amazon is officially the third largest company in America, with a market valuation in excess of $685 billion. In comparison, only Apple — with a market valuable of $815 billion — and Google — with a market valuation of $750 billion — are larger American companies than the Washington-based marketplace giant. 

Still, Amazon’s growth has been far surpassing its two California-rivals. In the past year alone, Amazon’s stock price has increased by a staggering 21%. To put this in perspective, Apple is facing a year-on-year stock price decrease.

As if Jeff Bezos, Amazon’s CEO, doesn’t have enough to smile about with this news, he recently passed Bill Gates as the richest person in the entire world with a net worth of $116 billion.

Things were not always so rosy for the Washington tech giant. For years, Amazon has reported strong revenue numbers and yet barely managed to pull in a profit. The market was hesitant but patient about this strategy — fearing Amazon’s long-term viability but understanding the company’s vast potential. With this latest earnings report, there may not be any more concerns about the company, especially in its three most vulnerable areas: (1) Retail operating margins in North America; (2) Amazon Web Services; and (3) shipping costs.

With respect to the marketplace giant’s North American retail operating margin, these margins have reached $1.69 billion — more than doubling. This is thanks, in part, to the company’s acquisition of Whole Foods as well as the company’s investments in expanding its network of warehouses finally paying off.

Amazon Web Services is likely the company’s most important area of business and showed even more growth and profits. Throughout the past ten quarters, AWS’s growth had been slowing. Now, however, revenue growth for the division improved from 41.9% to 44.6%, also posting an operating profit growth at 46.2%.

Finally, the company is spending less and less on shipping costs. Despite offering free two-day shipping with its Amazon Prime service, the company has managed to make deals to keep its spending in this category high but reasonable. 

This is all great news for Amazon executives and Jeff Bezos, but it also means that it is a great time to be an Amazon seller. If you are an Amazon seller in need of help obtaining a federal trademark registration, to ensure Amazon Brand Registry eligibility, you can contact the professional attorneys at Law Offices of John D. Gugliotta, P.E., Esq., LPA. Our registered trademark attorneys can help you secure the federal registration that you need to benefit from Amazon's Brand Registry! Contact us today here, or call us at (888) 298-8580.

The Law Offices of John D. Gugliotta, P.E., Esq., LPA publishes this blog for educational purposes only, not to provide specific legal advice. By using this blog site you indicate that you understand there is no attorney-client relationship between you and the Law Offices of John D. Gugliotta, P.E., Esq., LPA. This blog should not be used as a substitute for obtaining legal advice from a licensed attorney. In addition, statements made on this blog represent the viewpoints of the individual authors, and do not necessarily reflect the views of Law Offices of John D. Gugliotta, P.E., Esq., LPA or any of our clients.

Amazon Brand Registry is a fairly new program designed to protect an Amazon seller's brand. Brands are powerful tools, as they allow the customer to easily and quickly identify the source of the goods they buy. When a brand has a strong identity and a good reputation, consumers are more likely to continue buying from that brand — it is a safe space in an uncertain marketplace, and they know, more or less, what they are buying into. The new Amazon Brand Registry is important, but its specifics can be confusion. Therefore, it is important to understand the basics of both Amazon Brand Registry and the United States Trademark Act.

Brand Registry — What Is It?

The updated Amazon Brand Registry is designed to allow e-commerce sellers on Amazon to access exclusive and powerful tools. These tools range from predictive automation to text and image searching, and more. These tools aim to help sellers continue to drive traffic to their authorized Amazon listings. By using the Amazon Brand Registry, sellers can channel potential customers to their legitimate Amazon listings

Use Brand Registry to Protect Your Brand

Through Brand Registry, Amazon is aiming to address a persistent issues that sellers have been complaining about — namely, that other sellers infringe on one's legitimate trademark or other intellectual property rights. Copycat sellers have been a plague on the Amazon experience — cheap, low-quality goods trading on the good will of higher-qality products. This can result in confused consumers mistakenly purchasing the cheaper, copycat product only to be disappointed with the quality. This poor quality negatively affects the consumer's trust in the legitimate brand — through no fault of its own!

Further, "regular" Amazon sellers must adhere quite tightly to the company's algorithmic requirements. However, Brand Registry sellers have more freedom with respect to product titles, product details, product images, Amazon-issued product IDs. Further, Brand Registry sellers can reduce matching errors that may occur in the listing process. 

Who Qualifies For Amazon Brand Registry?

Sadly, the new Brand Registry program does not allow open admittance. Indeed, only sellers with a registered trademark for their brand are eligible for Amazon Brand Registry. Further, this federal registration must be for a Standard Character Mark or a Typeset Word(s)/Letter(s)/Number(s). Previously, Amazon only required that sellers prove that they owned a website domain name for the brand, that their product packaging included the brand name, and that the product was sold under that brand name. Now, however, sellers must show Amazon that they hold a registered trademark for their brand name, as well as be able to show images of the brand's logo, images of products/packaging with the trademark, a list of product categories under which the brand sells goods, and a list of countries where the brand's products are made and sold. 

In exchange for this, Amazon will work to protect established brands on its e-commerce marketplace. However, the seller must show Amazon that it is investing in its brand — specifically by registering their brand with the United States Patent and Trademark Office (USPTO).

Ultimately, Amazon Brand Registry is available to sellers with a federal trademark registration and who make their own products, who own private label brands, or who sell branded white-label products. Further, traditional manufacturers and authorized distributors can also qualify.

Were You a Brand Registry Enrollee prior to April 30, 2017?

If so, Amazon requires you to re-enroll in Amazon Brand Registry, provided that you meet all of the eligibility requirements. So, even if you were a Brand Registry member prior to these new requirements, you must still take action to register your trademark and then re-enroll in Brand Registry.

So… What Is a Trademark, Anyway?

A trademark is any image, mark, stylized words or text, catch phrase, logo, company name, product name, etc., which is used in commerce and associated with a good or service. Certainly, trademarks can be registered with either state or federal agencies. However, Amazon Brand Registry required federal registration with the USPTO. Importantly, anybody in the world can file a USPTO trademark application — there is no United States citizenry requirement.

After filing the application with the USPTO, the application goes through a rigorous examination process. During this, a USPTO employee weighs the merits of the mark's registration, considering whether the mark is distinctive enough to be entitled to trademark protection and whether or not another registration for the same, or a confusingly similar, mark exists in a similar category of goods or services. 

A trademark application can be as broad or as narrow as the applicant wants. For example, if the applicant only uses the trademark in association with the sale of workout equipment, the applicant can file an application with just one classification. However, if the applicant uses or intends to use the trademark in association with work out equipment, clothing, and cell phone cases, multiple classifications can be filed. An experienced trademark attorney can be invaluable in helping an applicant determine the areas, or classifications, of commerce that a trademark application needs. 

If the mark is eligible for trademark protection, it will be published for opposition. If no members of the public challenge the registration within a set period of time, the applicant is issued a trademark with the registration number. While this sounds fairly straight forward, the process can sometimes become very complicated very quickly. If the USPTO denies the application, the applicant will have to either challenge the refusal or abandon the idea of a federal registration altogether. An experienced attorney can help with this process and can zealously defend your mark in the face of any such refusal.

What Does Trademark Registration Get You?

Trademark registration is an incredibly powerful tool for brands. For example, federal trademark registration with the USPTO bestows the following rights and powers onto the trademark holder:

1. Federal registration provides exclusive intellectual property rights, ensuring that nobody but the trademark holder — or those authorized by the trademark holder — can use the mark.
2. Federal registration allows the trademark holder to file a trademark infringement lawsuit against competitors and copycats who sell similar products under the same or confusingly similar brand name.
3. Federal registration gives the trademark holder the peace of mind that they can properly invest in and build up the brand. By allowing for exclusive use of the trademark, trademark holders can confidently invest in the brand and strive towards building customer loyalty. 
4. Federal registration can provide indefinite protection of a trademark. So long as the mark is continually used in commerce and the proper maintenance and renewal filings are made, a trademark can remain registered forever.
5. Federal registration allows the trademark holder to leverage the power and benefits of Amazon Brand Registry program. This allows trademark holders to easily file and resolve complaints against trademark infringement from copycat sellers on Amazon.
6. Federal registration provides a myriad of other legal protections that an unregistered, common law trademark is not afforded.

Establishing Your Brand on Amazon Brand Registry

For many sellers doing business on Amazon's e-commerce marketplace, registration on Amazon Brand Registry is absolutely vital. If you need help obtaining a federal trademark registration, to ensure Amazon Brand Registry eligibility, you can contact the professional attorneys at Law Offices of John D. Gugliotta, P.E., Esq., LPA. Our trademark experts can help you secure the federal registration that you need to benefit from Amazon's Brand Registry. Contact us today here, or call us at (888) 298-8580.

The Law Offices of John D. Gugliotta, P.E., Esq., LPA publishes this blog for educational purposes only, not to provide specific legal advice. By using this blog site you indicate that you understand there is no attorney-client relationship between you and the Law Offices of John D. Gugliotta, P.E., Esq., LPA. This blog should not be used as a substitute for obtaining legal advice from a licensed attorney. In addition, statements made on this blog represent the viewpoints of the individual authors, and do not necessarily reflect the views of Law Offices of John D. Gugliotta, P.E., Esq., LPA or any of our clients.