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.
Most brand registry programs, such as Amazon Brand Registry, Etsy Reporting Portal, Walmart Brand Portal, and eBay VeRO program, strongly encourage or require that the brands participating in their programs obtain a trademark registration issued by the United States Patent & Trademark Office (USPTO). This is because having a trademark registration issued by the USPTO provides legal protection for the brand and helps ensure that the brand and its products are unique in the marketplace and not already being used by another party. Additionally, having a trademark registration issued by the USPTO makes it easier for the brand to enforce its rights and stop trademark infringement or unauthorized use of their brand’s registered trademarks. In some cases, it may be a requirement for participating in the brand registry program.
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 Registry
The Amazon Brand Registry was designed to prevent intellectual property infringement by providing brands and manufacturers with tools and resources to manage their products and intellectual property on the Amazon marketplace. The program is intended to help ensure that products listed on Amazon are legitimate and authorized for sale, and to prevent the sale of counterfeit or infringing products.
Here are some key features of the Amazon Brand Registry that are designed to prevent intellectual property infringement:
Overall, the Amazon Brand Registry was designed to provide a safe and trusted platform for brands and manufacturers to sell their products, and to help prevent intellectual property infringement by giving them the tools and resources they need to monitor and protect trademarks on the Amazon marketplace.
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 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, infringing, or otherwise unauthorized items. The VeRO program is designed to help protect the rights of trademark owners and maintain the integrity of the eBay marketplace.
As a participant in the VeRO program, owners with trademark registered trademarks can report suspected infringements directly to eBay. eBay will then review the reported listing and remove it if it is found to be in violation of the VeRO policy.
Additionally, eBay offers various tools and resources to VeRO participants, such as a reporting tool that allows trademark owners to quickly and easily report infringing items and a dashboard that provides real-time reporting and analysis of their trademarks on the eBay platform.
Overall, the eBay VeRO program helps to promote a safe and trustworthy marketplace for both buyers and sellers, by ensuring that products listed on eBay are legitimate and authorized for sale.
Enrollment Eligibility
Brand owners with active registered federal trademarks can join eBay’s VeRO program by completing a valid Notice of Claimed Infringement (NOCI) form. The NOCI form is used by trademark owners to notify eBay of potential infringing listings on its platform. The NOCI form allows trademark owners to provide information about their trademark and the alleged infringing listing.
Once a trademark owner has submitted a valid NOCI form, eBay will review the claim and determine if the alleged infringing listing should be removed from the platform. If the claim is accepted, the trademark owner will be enrolled in the VeRO program. Enrollment in VeRO allows trademark owners to more easily monitor and report potential infringing listings on eBay. It also gives trademark owners access to additional tools and resources to help them enforce their rights on the platform.
Note: To ensure a valid NOCI form, it is important to follow the guidelines and requirements set forth by eBay for the VeRO program.
Walmart Brand Portal
Similar to Amazon’s Brand Registry, the Walmart Brand Portal was designed to prevent trademark infringement by providing brands and product sellers with tools and resources to monitor their products and registered trademarks on the Walmart marketplace. This helps to ensure that products listed on the Walmart platform are legitimate and authorized for sale, and helps to prevent the sale of counterfeit or infringing products.
Some of the key features of the Walmart Brand Portal that are designed to prevent trademark infringement include:
Overall, the Walmart Brand Portal was designed to provide a safe and trusted platform for brands and manufacturers to sell their products, and to help prevent intellectual property infringement by giving them the tools and resources they need to monitor and protect their intellectual property on the Walmart marketplace.
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
The Etsy Reporting Portal is designed to prevent trademark infringement by providing a way for brand owners with registered trademarks issued by the USPTO to report suspected infringements on the Etsy marketplace. This helps to ensure that products listed on Etsy are legitimate and authorized for sale, and helps to prevent the sale of counterfeit or infringing products.
Here are some key features of the Etsy Reporting Portal that are designed to prevent trademark infringement:
Overall, the Etsy Reporting Portal was designed to help ensure the integrity of the Etsy marketplace and prevent intellectual property infringement by providing trademark owners with the tools and resources they need to quickly and effectively report suspected infringements and protect their trademark rights.
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.
Florence Marine X burgee design (red triangular shaped flag) is an excellent example of a registered design trademark.
OuterKnown is another good example of a registered letters in stylized form trademark.
Billabong is a great example of a registered design plus word 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.
Should I Hire A Trademark Attorney?
Our experienced trademark attorneys can provide valuable guidance and support throughout the trademark registration process, from conducting a comprehensive trademark search to determine the availability of the trademark, to preparing and filing the trademark application, to responding to any objections or challenges that may arise during the review process, and can represent you in any legal disputes or opposition proceedings.
Furthermore, our trademark attorneys can help you to navigate the complex and sometimes confusing legal requirements for trademark registration, and can help you to ensure that your application is complete and meets all of the necessary legal requirements. We can also help you to properly maintain your trademark registration, which is an ongoing process that requires ongoing monitoring and enforcement.
In short, engaging our trademark attorneys can help you to ensure that your trademark application is properly prepared, that it meets all of the legal requirements, and that you receive the full benefits of trademark protection. While it may cost more upfront to engage us, it can often save you time and money in the long run because we can help you avoid costly mistakes at every stage of the trademark registration process.
If you would like to contact us to discuss your trademark matter, give us a call or fill out our online contact form – it only takes a few seconds. Once you send your message, one of our attorneys will contact you within one business day.
