Protecting Brands in the Online Marketplace

Online sales represent a significant percentage of sales for most companies. However, a seemingly endless number of cyber infringers have emerged to cash in on a seller’s success.

There are a three common scenarios that occur with online sellers on sites like Amazon.com:

1. A third party adopts a name that is similar to your distinctive Amazon seller/store name, which could cause consumer confusion
2. A competing seller is selling generic products but claiming that they are your branded products
3. A competing seller has stolen your pictures and/or listing text

If any of these situations are familiar to you, the following brand enforcement strategy can help ensure your sales don’t suffer.

Step 1: Identify trademarks and copyrights that are important to your online strategy

Trademarks generally identify the source of products and services. They can be words, phrases, symbols, or drawings. They can even be sounds or smells. If the average consumer thinks of your company when they see, hear, or smell something on product or product packaging, there is a good chance you have a trademark. In an online setting, trademarks typically include store names, logos you use with your store names, the names of your products, the unique packaging of your products and the unique (non-functional) designs on your products.

Copyrights are the bundle of rights you get when you produce a “creative work.” This includes photographs, stock images, marketing pieces, and designs on the packaging.

Step 2: Register trademarks and copyrights to protect your company in the online marketplace

Online forums like Amazon.com receive a huge number of intellectual property related complaints every day. The complaints that are successful are supported by evidence of trademark use and ownership. Accordingly, we recommend having fully registered trademarks and copyrights before you attempt to report infringing activity. Trademark applications, from start to finish, generally take 6-9 months to become registered. Copyright applications usually take 3-4 months, but can take longer depending on the type of work.

Step 3: Enforce your trademarks in online forums

Once you’ve registered your trademarks and copyrights, you are ready to enforce your rights against third parties. First, however, consider whether the alleged infringer may not be infringing. Are the goods sold at the wholesale level? If so, those buyers would likely be able to resell the goods online. If you have a contract agreement that forbids these types of sales, this is likely a contract dispute, not an intellectual property dispute. A person who legitimately purchases a product can, in most cases, resell it any way they would like. Filing false claims can, at best, be a waste of time and money. At worst, it can mean you are on the hook for damages and attorney fees. That being said, the vast majority of infringement on sites like Amazon.com can be removed if the correct procedures are used.

For trademark violations on Amazon.com, Amazon typically requires a “test purchase” of the infringing goods and an investigation as to their legitimacy. We then offer the report of findings from the test purchase to Amazon when we submit the enforcement notice, along with proof of trademark ownership.

For copyrights, Amazon.com follows the Digital Millennium Copyright Act’s take-down notice procedure. Once proper evidence of copyright ownership is submitted with sworn statements attesting to the accuracy of the take-down notice, Amazon will remove the infringing works “expeditiously.”

If a seller consistently changes identities after losing intellectual property challenges, moves to a different marketplace, or starts selling infringing products on their own website, you may need to consider filing a lawsuit in Federal Court. While the process can be onerous, a successful lawsuit will provide injunctive relief and possibly damages, either in the form of actual damages for trademark infringement and potentially statutory damages of up to $150,000 for willful infringement of copyrights.

Your trademarks and copyrights are some of your most valuable assets. Taking preventative measures to ensure protection of your intellectual property can allow you the peace of mind to focus on engaging clients, taking orders and delivering quality products. The protection of your trademarks and copyrights is an investment in your brand and in your company.

For more information on protecting brands online, contact Kyle Peterson.