Overview of Brand Registry Programs

Brand Registry Enrollment

The growth of e-commerce has fundamentally changed the way we buy goods and services online.  Gone are the days of long lines, traffic, and other daily inconveniences. Instead, e-commerce gives consumers the ability to compare hundreds of products online, the flexibility to buy products on-demand, and, in many cases, the option to select fast and affordable shipping. Many e-commerce websites also host third-party sellers who compete with each other to offer the lowest possible price to the consumer. However, unbeknownst to many, as the popularity of e-commerce has grown over the years, so has the trade in counterfeit goods. It is inevitable that every business achieving any level of success selling on an online retail platform, or in the e-commerce marketplace in general, will encounter counterfeit versions of their products online.

Today, e-commerce is an essential retail method for businesses, including for small- and medium-sized enterprises.  Many e-commerce platforms take proactive measures to prevent the sale of counterfeits as well as provide reactive tools to right holders when a counterfeit is identified on its platform. Not all e-commerce platforms use these proactive measures, but almost all provide reactive measures for right holders to report counterfeits to their platform. These reactive measures include brand registries, like eBay’s Verified Rights Owner (VeRO) Program, Amazon’s Brand Registry, Etsy’s Reporting Portal, and Walmart’s Brand Portal, which allow right holders to report suspected counterfeit listings to the platform. Once a right holder reports a counterfeit, e-commerce platforms generally investigate the complaint, contact the seller for more information, and, if the product is identified as a counterfeit, remove the product from the platform and, in some cases, ban the seller. For many online retail platforms, once a counterfeit is reported it is often removed from its online marketplace.

In order to enroll in most brand registry programs offered by many of the largest online retail platforms, such as Amazon, Walmart, eBay, Etsy, and others, e-commerce sellers are either required or are strongly encouraged to hold active federal trademark registrations. Our trademark attorneys can assist!  Please note that the following summary is our understanding of the brand registry programs and you should visit the Amazon, Walmart, eBay, and Etsy platforms for further details and program changes.

Amazon Brand RegistryAmazon Brand Registry

Amazon Brand Registry is designed to assist online sellers in protecting their intellectual property, accurately manage their product listings, report counterfeit and otherwise infringing products, and increase online sales on the Amazon platform.  Amazon does not charge brand owners to enroll.

Enrollment Eligibility

Amazon Brand Registry Program is available for eligible brand owners to enroll so long as they have an active pending or registered trademark with the United States Patent and Trademark Office (USPTO). The active pending or registered trademark must also appear on the brand owners products listed for sale.

Once an active pending or registered trademark is obtained, the brand owner must create or sign into their existing Amazon Seller Central account to enroll. After enrolling in the Brand Registry Program (and providing the required trademark and product information), Amazon will send the brand owner a unique verification code to complete the Brand Registry enrollment process.  Once Amazon verifies and approves the brand owner’s enrollment, Amazon will provide access to the full suite of Amazon Brand Registry’s benefits and features that will assist the brand owner in protecting their brand and products.


eBay VeRO ProgrameBay Verified Rights Owner Program

The Verified Rights Owner (VeRO) Program allows brand owners with registered trademarks issued by the United States Patent & Trademark Office (USPTO) to report eBay product listings that are counterfeit or infringing. The VeRO program embodies eBay’s commitment to ensure that counterfeit and infringing products are removed from the eBay retail platform, as the are illegal and erode the trust of both buyers and sellers.

Enrollment Eligibility

Brand owners with active registered federal trademarks may join the VeRO program by completing a valid Notice of Claimed Infringement (NOCI) form. eBay reviews all NOCIs and will take action as appropriate. (Note – eBay is careful to check the details of all notices and may reject any claims that it does not believe to be sufficiently clear in  identifying an alleged infringement of intellectual property rights.) This may include rejecting inappropriate or non-intellectual property related claims. If eBay determines that taking action is appropriate, eBay can remove listings that are allegedly infringing intellectual property rights  The eBay member who has created the product listing is informed of the reason for their listing being removed, and if there is a dispute regarding the removal or lack of removal of a listing eBay encourages its members to resolve it directly with the intellectual property rights owner.


Walmart Brand PortalWalmart Brand Portal

Similar to Amazon’s Brand Registry, Walmart’s Brand Portal is designed to be an easy-to-use unified platform where Brand Portal member’s may manage their registered brands, products listings and associated intellectual property.  Walmart established the Brand Portal with the goal to provide brand owners with a more effective, efficient way to protect their trademark rights and to prevent Walmart customers from purchasing counterfeit and infringing products.  Like Amazon Brand Register,  Walmart does not charge brand owners to enroll.

Enrollment Eligibility

Walmart Brand Portal is available for eligible brand owners to enroll so long as they have an active registered federal trademark issued by the United States Patent and Trademark Office (USPTO). The registered trademark must also appear on the brand owners products listed for sale.

Once the brand owners trademark is registered by the USPTO, the brand owner must create or sign into their existing Walmart Seller Center account to enroll. After enrolling in the Brand Portal Program (and providing the required trademark and contact information), Walmart will then contact the brand owner to complete the Brand Portal enrollment process (note, Walmart sellers may link their Seller Center and Brand Portal accounts together). Once Walmart verifies and approves enrollment, the Walmart Brand Portal member may monitor and report any legitimate claims of trademark infringement for products listed on its Walmart.com seller platform.


Etsy Reporting Portal

Etsy’s Reporting Portal allows brand owners to report trademark infringement on the Etsy platform. If a brand owner believes that a seller is using their trademark on the Etsy platform without permission, they can submit a trademark infringement report through the Reporting Portal. It’s worth noting that Etsy’s trademark infringement policy also allows for a brand owner to send a notice of infringement to the seller directly, instead of using the Reporting Portal. Once the trademark infringement report is submitted, Etsy will investigate the case and take appropriate action, which may include removing the infringing listing, canceling the seller’s account, or taking other actions to address the infringement. It is important to note that Etsy’s trademark infringement process is a complaint-driven process, meaning that the brand owner must take the initial step of filing a complaint for Etsy to take any action.

Enrollment Eligibility

Esty Reporting Portal is available for eligible brand owners to enroll so long as they are a registered Etsy seller.  Additionally, the brand owner must have at least one active listing and have made at least one sale on Etsy. If a brand owner meets these requirements, the owner can enroll in the Esty Reporting Portal. To report trademark infringement on Etsy, the Esty seller must first be the owner of the registered trademark issued by the USPTO or have authorization to act on the trademark owner’s behalf (i.e., the brand owners trademark attorney). Once the brand owner has established its rights to the trademark, the owner can use the Etsy Reporting Portal to submit a trademark infringement report. The trademark infringement report will be reviewed by Etsy’s Intellectual Property (IP) team and if they find that a trademark infringement has occurred, they will take appropriate action, which may include removing the infringing listing(s) and/or taking action against the seller.


Brand Registry Trademark Requirements

Amazon Brand Registry, Walmart Brand Portal, Etsy Reporting Portal, and eBay VeRO Program provide their members with certain tools to report counterfeit or infringing listings and products for removal.  However, in order to become members of these programs, or to better assist these online retail platforms in enforcing the brand owner’s intellectual property rights, brand owners must hold an active registered federal trademark issued by the United States Patent and Trademark Office (USPTO).  Amazon Brand Registry will accept active pending federal trademarks applied for with the USPTO.  These brand registry programs will accept trademarks registered in standard character word format or special form format (e.g., design marks and word plus design marks).  The registered trademark must match the brand name used on the marketplace platform and the trademark must be applied to the products being sold or on the product packaging.  Finally, the registered trademark must be properly identified and categorized in the appropriate international trademark classifications.

Registered Trademark Formats Brand Registry’s Accept

A brand owner may apply to register a trademark in the following formats: standard character word mark, design mark or a word plus design mark.  Design marks and word plus design marks are considered special form formats.  Most trademarks are registered in standard character word format.  This format protects words, letters, numbers, or a combination of those without any limitation to a specific font style, size, color, or design – such as “NexTrend Legal.”  Registered standard character word trademarks receive protection for the words themselves, regardless of how the word is displayed.

Design marks and word plus design marks are trademarks registered in special form format.  A trademark registered in special form format protects design marks and word plus design marks that are stylized, incorporate unique designs or logos, or are in color.  Brand owners typically seek registration in special form format when the style, design or colors are an important or unique part of the trademark.  Trademarks registered in special form format (e.g., design marks and word plus design marks) receive protection on the look-and-feel of the trademark.

Fedel Trademark DesignFlorence Marine X burgee design (red triangular shaped flag) is an excellent example of a registered design trademark.

OuterKnown Design MarkOuterKnown is another good example of a registered design trademark.

Billabong is a great example of a registered word plus design trademark.

Although most trademarks are registered in standard character word format, depending on the brand owner’s legal budget, our trademark attorneys strongly encourage brand owners to register their trademarks in both standard character word and special form formats.

Federal Trademark Scope of Protection

No Monopoly Over All Trademark Classes

Once the trademark format is decided upon, the brand owner must specify the goods or services being offered to consumers.  This is extremely important.  A brand owner cannot register a standard character word or special format mark without identifying the goods or services being offered in specificity.  Identifying the goods or services associated with the trademark with specificity puts the world on notice of the trademark’s scope of protection.  Again, this is extremely important because if you do not identify the goods or services correctly, the USPTO examining attorney will have several grounds in which to refuse registration.

Once the goods and/or services are identified, the brand owner must choose the appropriate trademark classification.  The USPTO divides trademarks into 45 different categories: 34 for products and 11 for services.  These categories are known as trademark classes or international classes, and are used by the USPTO to help differentiate and keep track of the many hundreds, if not thousands, of trademarks being registered each day. The trademark class system also allows a trademark owner from having a monopoly in a certain trademark.  For example, Quiksilver is a famous brand for surf apparel and accessories and it holds a registered trademark in trademark class 25 for clothing, but Quiksilver is also a registered trademark owned by a different company providing health club services in trademark class 41.  Therefore, just because the famous surf brand Quiksilver holds a trademark registration in international class 25 does not mean it can claim a monopoly over the other 44 different trademark classes.