Reporting a trademark or copyright infringement to Amazon is easy. The important thing is to make sure you do it properly. What many brands do not realize is that they are exposing themselves to legal liability if they do it wrong. Amazon takes no responsibility for how you use their tool.
A spate of recent lawsuits by sellers against brands who made improper or even outright bogus claims is enough to give one pause. One seller we know of won a $2M settlement against a brand for taking them down on Amazon with a bogus trademark complaint.
Here’s our recommendations for brands wanting to enforce on the platform:
- Verify that you have a legitimate complaint. You cannot use Brand Registry to take down sellers who are violating MAP or just because they are competitors and you don’t like them. If they are selling authentic product bought from your distribution channel – even a retail store — you cannot claim infringement or copyright.
- Search for your Brand. Login to Brand Registry and run a search for your brand. You may see other products come up from competitors. This is likely because they have your brand name in their backend keywords. You can report this as trademark infringement but check out the listing first to make sure they are not using your trademark legitimately such as “compatible with…your brand.” Make sure, also, that the product that comes up is not in another category. It is possible that someone shares your trademark name in a totally different category. You may want to run a quick search at the USPTO.
- Note any legitimate resellers. You don’t want to take an honest seller down. If you know you have authorized resellers but don’t recognize their storefront name, ask them. It is better to spend a bit of time on email or on the phone to spare a partner a mark on their Amazon record…and to protect yourself from liability down the road.
- Select “Report a Violation.”
- Select the appropriate complaint. – the brand registry tool is only for trademark and copyright infringements.
- Don’t shortcut the test buy. If your complaint is counterfeit or knock-off, make sure you’ve done a test buy and have the pictures AND PRODUCT to prove your case before taking a seller down.
- Select the sellers. Amazon will ask you questions (like if you did your test buy) and tell you that you are stating under penalty of perjury that this takedown is legitimate. Sellers can use this against you in court. Don’t lie. Don’t do silly stuff like do a test buy after you’ve filed your complaint or on the same day that you filed your complaint. Select the sellers from your previous research, being sure not to include legitimate sellers.
- Wait. Amazon will review your application. Suspensions should occur within a few days, and you will start to get emails from sellers wanting to resolve the issue.
- Respond to requests for retractions. Whatever your decision is about these sellers infringing on your intellectual property, do them the courtesy of responding. Don’t put them in a position of having to sue you to find out what the basis of your claim is. If you took down an honest seller by mistake, file the retraction quickly. We strongly suggest you prepare in advance for the requests for retractions. Some brands send a legal letter stating the basis of their claim, and why they will not be filing a retraction, for example. Others will file a retraction if the sellers sign a cease & desist and remove their inventory from all online platforms.
You can also use the tool for patent violations, but the process is somewhat different. You will need to provide the patent to Amazon and the review process may take longer. You will have to deal with angry sellers wanting a retraction and/or sending proof that their product does not violate your patent. This is the route to take, however, if your patent is a design patent.
Amazon has recently provided a new program for brands with utility patents where you can put up $4,000 for a neutral IP attorney (provided by Amazon) to review your claim. The other sellers/brands will have three weeks to respond and put up $4,000. If they do not, then you automatically win the dispute. Their listing is taken down permanently. You get your money back.
If they do respond, then the neutral party will evaluate your claim. If they find you are correct, they will rule against the other side. You get your money back. Their listing is removed from the platform permanently. If you lose the dispute, you lose your money and they get their money back plus their listing stays live.
Sellers who are infringing on your patent will generally not respond. They’ll just remove their inventory because they know they won’t win.
After we give advice, there are several questions that come up over and over:
Q. What is the best way to make sure we don’t get sued for taking this action?
Verify. Spend the time up front to verify who the sellers are, and who they are buying from. This will help you a lot. First, it provides a basis for takedowns with Amazon. If you can prove that you’ve diligently tried to verify where sellers are buying their inventory, Amazon will consider your Inauthentic complaint (note: I did not say Infringement.) Second, if you can identify the sellers, you can contact/sue them off platform. Third, it supports your case if you ever do go to court.
Q. What if we DO want to enforce MAP?
It is doubly important to verify if your goal is to enforce MAP. Finding out where the sellers are buying from allows you to go to the distributors who sold to them. Sometimes the MAP problem isn’t rogue sellers, it is rogue distributors. It may be that the sellers on Amazon have no agreement with you or anyone else on MAP pricing. They are not breaking any laws.
Q. What if we suspect our competitors are pulling dirty tricks on us?
Brand Registry is generally not the answer in this case. It is improper to use the tool to take revenge on bad actors. We have other approaches that follow Amazon’s terms of service and that reduce your risks of getting sued later.
Q. How do I verify where sellers are buying their inventory? All I have are storefront names, and I’m not allowed to contact them through Amazon.
This is part of the reason we launched Brand Enforcer earlier this year. We wanted a compliant way to help brands enforce their rights and protect honest sellers. A cornerstone of our service is identifying sellers and where they are buying their inventory. Contact us to learn more.
Learn more about Brand Registry
If you are not in Brand Registry, other ways to enforce your rights
Need help setting up Brand Registry? Contact us.
Want to see a demo of how eGrowth Partners Brand Enforcer can help your brand? Contact us
Please note that we are not lawyers and this blog in no way provides legal advice. We strongly suggest that any brand looking to enforce their rights consult with an IP attorney to make sure they understand the complaint they are filing. In addition, you may want to discuss with them what your end game is. Do you want the brands to sign a cease & desist document, for example? Are you looking to get verification of where they bought the inventory? What is your plan if the seller is not infringing on your trademark? Will you file retractions? eGrowth Partners can help you navigate these scenarios, but we cannot advise you on the legitimacy of your complaint.
We strongly recommend that you hire an IP attorney. This is a highly specialized field and a regular attorney won’t do. You wouldn’t want your regular doctor conducting surgery on your heart, it’s the same concept here. If you do not have an IP attorney, we can make recommendations to you from those we’ve worked with over the years.
HOW CAN WE HELP YOU?
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As leaders in the world of Amazon compliance we’ve worked with thousands of sellers over the years. We built our own outsourced team to help sellers manage their accounts and now we are offering our unique expertise, training and management skills to you. Introducing High Touch Smiles – Find out more and schedule an appointment
Contact us for specific advice on your situation:
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NEWS NUGGETS
- Even Amazon’s own products are getting hijacked by imposer sellers. “Not even Amazon itself is safe from getting hijacked,” states this recent article by The Verge.
- “Amazon’s sales platform may be too big to police,” says Casey Newton of The Verge in an article released today.
- Even the Wall Street journal has joined the recent chorus of media outlets concerned about the Amazon platform. In an extensive article, the WSJ’s opening volley is “Just like tech companies that have struggled to tackle misinformation on their platforms, Amazon has proven unable or unwilling to effectively police third-party sellers on its site” . That article is here but may be behind a paywall.
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