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The Principal and the Supplemental Registers ~ Why Amazon Sellers MUST Be Aware of the Difference!

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!

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Amazon's Brand Registry 2.0 Program

 As most of you all know by now, Amazon rolled out its new Brand Registry “2.0” platform in May, promising to offer improved brand protection for those enrolled—and providing yet another reason to register your trademark with the U.S. Patent and Trademark Office.  

The new Amazon Brand Registry (Brand Registry 2.0) requires a federally registered trademark in order to participate.  According to Amazon, only brands that have registered trademarks in the United States, Canada, Mexico, India, Japan, France, Germany, Italy, Spain, the United Kingdom, and the European Union are eligible for enrollment in the new Brand Registry.  (Some applicants may want to consider filing in these international jurisdictions as trademark applications may move faster than at the USPTO. Contact me to discuss if the option is right for you.)

Also, please note that Amazon seems to have very recently changed its requirement that the registered mark must be a standard character mark; as of today, Amazon appears to be approving design or stylized registrations as long as there is a text portion that represents your brand.

With this said, Amazon could change this back to requiring a standard character mark at any time! It's a dynamic platform, and we are just doing our best at any given moment to keep up with changes.

Further, please note, even if your brand was enrolled in Amazon Brand Registry prior to the new rollout, it will not be grandfathered in to the 2.0 version.  All brands must enroll in the new program AND must meet the new eligibility requirements. 

Amazon's move marks a shift in the e-commerce industry toward enhancing brand security and consumer protection: with hijackers and counterfeiters at an all-time high, internet sellers are taking all steps necessary to protect their products and intellectual property.  As the undisputed leader in the industry, e-commerce giant Amazon has, we hope(!), raised the bar in providing security and peace-of-mind its sellers and consumers.            

Counterfeit Removal and Transparency Programs

One of the most beneficial features of the new Brand Registry is the expanded counterfeit removal program.  Brand Registry participants can now come alongside Amazon and flag potential counterfeiters. 

This features will allow Amazon to swiftly take down listings, and in some cases accounts, that are violating intellectual property rights.  The use of a simple “Report a Violation” tab within the program creates an easy path to brand protection.

Amazon also introduced the “Transparency” program, which places codes on products, allowing consumers to find out more information about their purchased products by scanning the codes.  This program aims to cut down on counterfeit goods, as participating manufacturers can place details about the origins and authenticity of their goods in the Transparency app, among other information.

Listing Control and Enhanced Content

Registering your trademark with the USPTO and with Brand Registry allows Amazon to quickly and efficiently remove hijackers from your listing.  It also allows you as the seller to participate in Brand Registry and take full advantage of all of the advancements Amazon is making, now and in the future. 

These new enhancements will prevent counterfeit products from entering the marketplace (which is good for sellers and consumers!) and gives the seller more complete control over their brands.  Amazon’s previous retention of control over the merchandise sold on its platform has caused many third-party sellers to distrust the e-commerce platform and some to even opt out of placing their products on the site.

Sellers can also now add more details to their listings, such as an “About” section and links to an Amazon “store” for their brand, creating brand awareness and loyalty. Now when a seller searches for a product that is enrolled in Brand Registry, only one listing will show, even if there are several other sellers with the same product.  This gives the authentic manufacturer control over the search and the listing. 

Wrappin' It Up

Unfortunately for newer companies, brands with pending trademark applications are not eligible for Brand Registry 2.0.  The new program requires proof of a registration with the USPTO (through providing Amazon with a Registration Serial Number); and because applying for a trademark takes months (and sometimes years), it is in the brand owner’s best interest to begin the process sooner rather than later. 

While it does make some newer brands ineligible for participation, the registration requirement is essential to offering sellers brand protection and consumers an authentic and positive shopping experience. 

Note, the Registration must be on the Principal Register ~ and not the Supplemental Register. Do not fall into this trap! Weak descriptive marks end up on the Supplemental Register.

Need to create a strong trademark ~ one that is eligible for the Principal Register and worthy of aggressive enforcement? Don't get stuck with a bad brand name. Check out The Trademark Trailblazer: The Brand Name Creation Blueprint

 

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US Customs ~ Another Weapon for Your Brand-Protection Arsenal

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!  

 

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