The Federal Trademark Register is made up of two separate registers—and they are not created equal.

The Principal Register is just that—the principal, primary list of trademarks with the fullest federal protection.  

The Supplemental Register, on the other hand, is the second string, reserved for trademarks that couldn’t quite make the cut for the Principal. Let’s just call them the benchwarmers. Generally, this register is the home to trademarks that would be considered "merely descriptive" of the underlying goods and/or services associated with the trademark. 

So, what exactly is the difference?

Principal Register

The Principal Register is what all trademark owners are after. Once listed as the owner of a trademark on the Principal Register, you are legally presumed to be the exclusive owner of that trademark within the United States. This register also gives you full rights to the trademark in a court of law, should you need to pursue an infringer.

You can use the fancy ® by your mark as indicia of registration, and apply for incontestability after five years of use. How cool is that?

Trademarks that are unique, distinctive, and not merely descriptive of goods and services are typically eligible for registration on the Principal Register. {You do NOT want a trademark that is merely descriptive of your goods or services. But not to worry. We can help you!}

Currently, only trademarks on the Principal Register are eligible for Amazon’s Brand Registry enrollment program. So, if you think simply moving an applied-for trademark to the Supplemental Register because you’ve been issued a “descriptiveness refusal,” BEWARE!

 Supplemental Register

The Supplemental Register, while generally seen as less powerful than its counterpart, still offers some protection. Trademark owners on the Supplemental Register can use the ® symbol (woohoo!), and the trademark may be used as a basis for refusal for subsequently-filed confusingly similar trademark applications.

Unfortunately, a trademark on the Supplemental can never achieve incontestability.

And please, keep in mind, as mentioned previously, trademarks on the Supplemental Register are NOT currently eligible for Amazon’s Brand Registry program.

Still, further, you cannot record a trademark that is on the Supplemental Register with US Customs. So, think twice before simply amending your trademark application to the Supplemental Register if you received a mere descriptiveness refusal. A trademark attorney {like yours truly} may be able to assist you in developing legal arguments to overcome such a refusal!

The bright side? Descriptive marks can actually achieve “acquired distinctiveness” after five years of use in commerce. 

Some trademarks may wait out this sentence with a thin layer of protection on the Supplemental Register. In short, they can just hang out on the bench while the distinctiveness hopefully improves over five years of use in commerce.

So, how can you avoid being bumped to the Supplemental Register?

First, choose a strong trademark at the outset!  {We can help you through your trademark creation process!}

Now, while it’s better to create a strong trademark at the outset, if you do end up with an arguably descriptive mark, instead of just moving the trademark to the Supplemental Register ~ which is what is often suggested in an Office Action from the USPTO ~ you may want to consider trying to prepare arguments to overcome the descriptiveness refusal.

Convincing the Examining Attorney that your trademark should be considered for Principal Register enrollment is certainly within the realm of possibility, but formulating extensive legal arguments does not necessarily mean a slam dunk.

Key takeaways:

1. Create a strong mark at the outset. The Trademark Trailblazer: The Brand Name Creation Blueprint, will guide you through the land mines of trademark creation ~ and will teach you how to avoid the legal traps, like ending up with a trademark that is weak and subject to a merely descriptive refusal.
2. Beware of simply amending a trademark application to the Supplemental Register. {You may think it's an easy fix, but you might be surprised. There may be unintended consequences....}
3. Even if your trademark ends up on the Supplemental Register for a while, don’t lose sight of the fact that you are building a brand, and not an Amazon business!

Second-string is better than not even being on the field!!!  

Do you need help creating a trademark that's unique, distinctiveness and will not be subject to a mere descriptiveness refusal? Apply to work with us and ask about our Black Diamond Service!

Helping Your Brands...Boom!!!

Wouldn’t you love to watch your business boom on the Amazon platform? Did you know that there are over two million sellers on Amazon.  Two million sure sounds like a lot, but that number pales in comparison to the over ONE BILLION items sold on this platform worldwide.

I bet you had no idea that Amazon traffic hovers at around 175 million visitors a month!!!!

So what does this mean for your business?  Amazon has literally transformed itself into an eCommerce, king-sized flea market.  And within this market, you must proactively protect your brands to ensure your business succeeds!   

As an Amazon seller, you must stay alert and vigilant!!! Don’t allow your products to be eaten by counterfeit predators or drown in the murky waters of the gray market!

Why is it essential to stay alert as your products are being sold online?

We all have that one friend who brags about the Gucci purse purchased for only $10.00.  This is exactly what can happen to your product if you are an Amazon seller or are thinking about joining this giant eCommerce platform.  

Do you want your customers to receive a cheap counterfeit version of your product that could tarnish the reputation of your brand and company? Do you want your products to be leaked out into the public through unauthorized distribution channels where they trickle down into the murky waters of the gray market?

Don’t let this happen to your cherished brand. So let’s be proactive and look just a little closer at how to spot suspicious activity on your Amazon listing when it comes to counterfeits and the gray market.     

Exactly what is a counterfeit good and how can I spot suspicious activity?

A counterfeit good is simply an imitation made by a third party (other than the trademark owner) with the intent to deceptively represent its content or origins to consumers. All counterfeits are trademark infringements, but not all trademark infringements are counterfeit. (In other words, there are various types of trademark infringement; counterfeit is just one of them!)  

What are you dealing with? Look at the seller name and location. If it appears to be China-based, you are likely dealing with straight-up egregious counterfeit activity and your brand is at risk of being devoured by these eCommerce predators.

If you have a registered trademark (you should!), you could consider recording your trademark with US Customs. This is just another step in your brand protection arsenal.

Exactly what are gray market goods and how can I recognize them?

The “gray market” can be thought of as a large body of water: it's the dark place where the unauthorized distribution of your products occurs.

Perhaps retail arbitrageurs have obtained your products at a liquidation sale. These products might not be eligible for the manufacturer’s warranty. They might be priced considerably lower than the MSRP, thereby damaging your brand value. Still further, gray market products are often not eligible for rebate benefits offered by the manufacturer or post-purchase customer service.

Unfortunately, for brand owners and manufacturers, gray market goods end up on the Amazon platform and often times Amazon’s customers are duped into purchasing from these sellers. Although they might think they are getting a deal, there is no guarantee that the manufacturer will honor any type of warranty.

Gray market goods aren’t technically counterfeits. However, oftentimes arguments can be formulated that will force these types of sellers into a counterfeit seller position when there is a material difference noted in the products.  

If the seller appears to be US-based, you are likely dealing with a situation where the seller has somehow obtained your goods through the gray market (i.e, unauthorized distribution channels). Again, these are typically retail-arbitrageurs that have the power to drown the value of your brand in these murky gray market waters if you aren’t on the lookout.

How can I enforce my brand OFF of the Amazon Platform if I become prey to counterfeit predators or gray market sharks? In other words, do I have to go through the platform to deal with these third parties?

Try Dealing with the seller directly:  When a counterfeit seller is recognized, this should be addressed immediately. You might want to deal with the seller directly by sending “notices of infringement” or "cease and desist letter." Such correspondence puts the third party on notice, and gives the third party an opportunity to remove themselves.

Also, you can frame the letter as an exploratory letter, not being too aggressive, in order to learn more about what they are selling and where they are procuring the product. Should you discover that a distributor is breaching your agreement with them, you may need to revisit the agreement and determine if how to get out of it.

Send out a cease and desist Letters: First, you'll need to find out where the third party is located. You might need to do some supers-sleuthing and/or outsource this work to someone who can help you investigate.  

If the seller is located in China, it’s unlikely your demand letter will carry much weight because they know it’s difficult to enforce rights in China. While Amazon might help, you could consider hiring a law firm in China to help you.  

If the seller is located in the US, you might want to have an attorney prepare the demand letter for you to ensure the appropriate language is used. If you investigate the seller, however, and realize it might be someone you know, or a distributor breaching your distribution contract, you might want to see what you can work out before getting attorneys involved, and see if you cannot repair the issue going forward.

*TIP*

Consider going off the Amazon platform for enforcement, if your trademark isn’t registered yet with the USPTO, but you’ve established common law rights.

How can I enforce my brand ON the Amazon Platform if I become prey to counterfeit predators or gray market sharks?

Keep in mind, the longer these sharks remain on your listings, the more money you are losing.  

If you know they are a nefarious seller and/or China-based and clearly a counterfeiter and/or have had prior unsuccessful dealings in the past (with the seller directly), it’s time to consider reporting directly to Amazon. When you go directly to Amazon, use their online infringement reporting forms and save your "Complaint IDs" that are emailed to you after reporting.

If you have to submit multiple demands to Amazon, include these in the letters as Prior Complaint IDs.

If the third party is selling a counterfeit product, make sure you clearly outline the material difference in your goods and the third-party seller's products. Materially different goods are not considered “genuine,” because they are confusingly different.

Courts define “material difference” broadly: it is virtually any difference that exists between the authorized goods and unauthorized goods that a consumer would likely consider relevant when purchasing the product. Still further, “…[the unauthorized resale of a materially different trademarked product can constitute trademark infringement. Beltronics USA, Inc. v. Midwest Inventory Distribution, LLC, 562 F.3d 1067 (10th Cir. 1009), at 1072.

Courts have found that the voiding of services and warranties associated with a product create a material difference in the product and a likelihood of confusion. Keep in mind that not all courts agree, and the law does evolve. so, be sure to discuss with an attorney your particular situation and ramifications.

Examples of material difference for China-based goods are commonly as follows: quality, size/dimension, logo distortions. And for gray market activity, the lack of a manufacturer’s warranty, post-purchase customer service, and rebates would be considered.

*TIP*

When trying to remove these third parties using the Amazon platform, don’t mention the fact that the seller is “unauthorized.” This seems to confuse Amazon. Stay on point that you are dealing with a counterfeiter. (Amazon doesn’t care about unauthorized seller issues and considers that you as the seller should address this off the platform; in other words, the platform isn’t going to help you enforce those agreements.)

Are test buys feasible?

When test buys are feasible, be sure to provide the order numbers, submit the demand to Amazon immediately, and tell Amazon you’ll provide photographs of differences of products upon request. (I’ve never had Amazon come back and ask me for photos).

If test buys are not feasible ~ perhaps because the counterfeit is coming straight from China ~ argue to Amazon that the seller is shipping products from countries in which you do not manufacture or distribute your brand.

Amazon allegedly requires test buys, but a vast majority of counterfeit seller removals can be done without test buys. The requirement isn't the "test buy." Amazon wants to confirm that there is a material difference if they are going to be removing a third party seller on that basis.

If doing a test buy isn’t feasible, then submit the counterfeit seller removal demand anyway and explain to Amazon the material differences. If Amazon doesn’t honor the demand, you might need to escalate to a law firm. Amazon might be more responsive to correspondence from law firms.

How can I be proactive in the protection of my brand name? 

• Register Your Trademark to Protect Your Business! {Apply to work with our firm here.} File your trademark application sooner rather than later. Get the ball rolling, because it can take at least six to eight months before you have the Registration Certificate in hand, and that’s assuming a smooth application process. There is an examination process with trademarks when you file an application with the USPTO: you aren’t granted protection just because you file an application. Amazon is very resistant to enforcing non-registered IP rights. In fact, Amazon generally takes the position that it's not there to help you enforce your rights; however, it will remove counterfeit sellers in the interest of protecting consumers. Hence, you might have to do your enforcement OFF the platform using your common law rights and send demand letters directly to counterfeiters. Registering your trademark is the most effective way to protect your brand so that it can grow over time.

• Consider filing your trademark application in the EU, because it moves a lot faster than in the US. (You can file in the US first, and then file in the EU.)

• Consider other international platforms where you are selling ~ like Canada, Mexico, and the UK. If you are selling on these international platforms on Amazon, you need to register your trademark in the relevant jurisdiction.

• Tightly control your channels of distribution from the outset. Or, go back and revisit your distribution agreements are tight and address eCommerce distribution. Make sure your distributors remain compliant. We are living in a new world with eCommerce, and these agreements need to be revised and closely monitored going forward.

• Keep on top of Amazon and the new tools it might roll out to help brand owners, such as Brand Registry, Transparency, and Project Zero. Amazon is a constantly changing platform. Stay educated and involved! Once your trademark is registered with the USPTO, you will be eligible to register your mark on Amazon’s Brand Registry 2.0. This registry allows you to have more control over your product pages and brand name, so customers are more likely to see the correct information associated with your brand. In order to qualify your product for Amazon’s Brand Registry, you must have the following:
  • Brand name that has an active registered trademark.
  • The associated government-registered trademark number. Only trademarks that have been issued by government trademark offices in the US, Brazil, Canada, Mexico, Australia, India, Japan, France, Germany, Italy, Spain, the United Kingdom and the European Union will be accepted.
  

• Record your trademark with US Customs.

Ensuring success on the Amazon platform requires you to be 100% alert and proactive.  Brand protection is a never-ending endeavor. There will always be counterfeit predators and gray market sharks making an effort to devour the equity you're working hard to build in your brand.  

You must always be proactive in warding off these relentless nuisances so that you can preserve and increase the value of your brand.

The tools and methods to protect and enforce your brand on Amazon are ever-evolving!

If you need assistance with trademark creation, clearance, prosecution, enforcement and/or registration maintenance, we are here to help! Apply to work with us today!

For many experienced e-commerce brand owners, the question is when, not if, they will be the victims of a counterfeit seller. 

Manufacturers overseas are producing knock-offs of American goods at a rapidly increasing rate.  In 2007, the value of counterfeit imports worldwide was $176 billion; in 2013, that number had risen to $461 billion. 

The United States is hit the hardest by these intellectual property rights infringers, as 20% of the total seizures are counterfeit American products.  This alarming trend highlights the importance of not only registering your trademark with the U.S. Patent and Trademark Office, but also of employing every tool available to protect your rights.

One of the most overlooked strategies against e-commerce counterfeiters is Customs Recordation through the United States Customs and Border Protection agency. The CBP is a federal agency whose primary function is securing the integrity of the country’s borders. 

This authority also includes protecting intellectual property rights in the United States against infringement from abroad.  The CBP is authorized by law to intercept counterfeit or infringing goods, seizing 31,560 imports and arresting 451 individuals in 2016 alone.

When you record your trademark with the U.S. Customs and Border Protection, all relevant information (including images of your mark) is input into the CBP database.  As goods are imported through each of the United States’ 317 ports of entry, CBP officers compare the imports to those registered in the database to determine if any have infringing marks on them. 

CBP can then seize and detain any goods that violate intellectual property rights in the United States. 

The CBP encourages registered mark holders to partner with them to help protect your rights.  They have several resources, including information on drafting a Product ID guide to assist officers in understanding and better protecting your mark.  The CBP also invites anyone with information on suspect imports and importers to report them via the e-allegations program.

Any trademark registered on the U.S. Patent and Trademark Office Principal Register (currently, marks on the Supplemental Register are not eligible) qualifies for customs recordation; and the recordation fee is only $190 per International Class of goods. {This post discusses the differences between the Principal and Supplemental Register.}

Before beginning your application, you will need your USPTO Registration number and digital images of your mark.  {Yet another reason it's super important to register your trademark!} 

The recordation application also offers options for requesting protection against “gray market” articles (i.e., goods sold legally, but outside of normal commerce channels and not as the original manufacturer intended) on the basis of material and physical differences. 

Keep in mind that after recording, you will need to keep Customs and Border Protection updated with any changes in your mark or goods (e.g., change in ownership, the addition of new products, etc.), and you must renew your recordation within three months of the expiration of your 20-year USPTO trademark registration.   

This simple tool can offer your brand a world of protection.  Customs Recordation allows the U.S. government to stop counterfeits at the border, and often to prosecute those responsible. 

The benefits far outweigh the nominal cost and trouble, making recordation with Customs and Border Protection a no-brainer for even the most novice trademark owner. 

Please feel free to contact us if you would like to pursue recordation of your registered trademark with US Customs!