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E-commerce businesses face trademark challenges that have no parallel in brick-and-mortar retail. The global reach of online sales means that a trademark registered only in the United States provides no protection against a seller in China listing a counterfeit product on Amazon and shipping it directly to U.S. consumers. Platform policies, keyword advertising, domain names, and third-party seller programs create dozens of additional trademark exposure points that require specialized legal management.
Amazon Brand Registry gives trademark owners enhanced tools to protect their intellectual property on the Amazon marketplace. Enrollment requires an active registered trademark with the USPTO (or an equivalent national trademark office). Once enrolled, Brand Registry provides access to automated protections (Amazon’s algorithms proactively scan for and remove suspected infringement), Project Zero (self-service takedown of counterfeit listings), and the Transparency program (serialized QR codes that authenticate individual product units).
What Brand Registry does not provide: it does not prevent third-party sellers from listing your products for resale (legitimate resale is protected under the first sale doctrine), it does not prevent unauthorized sellers from winning the Buy Box, and it does not automatically remove sellers who infringe your trade dress rather than your registered trademark. An e-commerce trademark attorney is essential for navigating these gaps.
One of the most contentious trademark issues in e-commerce is keyword advertising — specifically, whether a competitor can purchase your trademark as a Google Ads or Amazon Sponsored Products keyword to trigger their ad when users search for your brand. The law is not fully settled.
The Ninth Circuit has held that purchasing a competitor’s trademark as a keyword does not, by itself, constitute trademark infringement — the key question is whether the resulting advertisement is likely to confuse consumers as to the source of the advertised goods. Network Automation, Inc. v. Advanced Systems Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011). However, when a competitor’s ad actually displays your trademark in the ad copy or headline — rather than just purchasing it as a keyword — that use creates a much stronger infringement claim.
Counterfeit goods — products that bear a counterfeit mark identical to, or substantially indistinguishable from, a registered trademark — are actionable under 15 U.S.C. § 1114(1)(b) and can result in enhanced damages of three times actual damages plus attorney’s fees under 15 U.S.C. § 1117(b). The Trademark Counterfeiting Act, 18 U.S.C. § 2320, also provides criminal penalties for trafficking in counterfeit goods.
Gray-market goods — genuine products sold outside authorized distribution channels — present a more complex legal situation. Under Lever Brothers Co. v. United States, 981 F.2d 1330 (D.C. Cir. 1993), the importation of genuine goods bearing an authentic trademark can constitute trademark infringement if the goods are ‘materially different’ from those authorized for sale in the U.S. market. Material differences can include warranty coverage, product formulation, labeling, or after-sale services.
Revision Legal’s e-commerce trademark attorneys represent brands from initial trademark strategy through enforcement litigation on Amazon, in federal court, and in UDRP proceedings. Contact us at revisionlegal.com/contact or visit our Trademark practice page.
Trademarks are valuable business assets that drive sales, create consumer loyalty that drives repeat business, and allow businesses to easily expand into new markets, niches, platforms, and products. Just like traditional businesses, e-commerce businesses need trademarks, and it is beneficial to hire trademark lawyers who also have deep knowledge and understanding of the e-commerce “space” and of e-commerce businesses.
At Revision Legal, we love helping e-commerce businesses thrive because we ARE an e-commerce business. We have deep experience and success helping e-commerce businesses and have a similarly deep experience with trademark protection and litigation. Here is some basic information on trademarking for e-commerce businesses.
What are trademarks and why do you need them?
In simple terms, trademarks are words, phrases, designs, logos, marks, or other things that identify a specific business as the commercial source of a given product or service. Trademarks function as trademarks if seeing them — or even hearing a description of them — brings to mind a company and/or a product. For example, if you hear the words “golden arches,” likely you are reminded of a certain company and its line of food products. That is what trademarks do for a company, and that is why your e-commerce business needs trademarks.
How do I get a trademark?
Once established, they can be bought and sold. But, for most, the “start” of a trademark is creative action. That is, your e-commerce company creates your trademarks through in-house creative action or by hiring a third party to create new trademarks. The latter is often the method used for creating unique logos and designs that are eventually used as trademarks. Many word or phrase trademarks flow from the name of a company or product/service being provided.
It is important to think of trademark creation as an interactive process involving trademark clearance searches. That is, a trademark must be unique and not already in use. When a trademark creative idea is proposed, the next step is to do a clearance search. If there is already a trademark that is confusingly similar to the proposed trademark, it is time to “go back to the drawing board.” You need experienced trademark attorneys because the question of “confusingly similar” is legally and factually complex.
What is trademark registration?
Once you have a trademark that has been cleared through at least one in-depth clearance search, the next step is registration. You can register a trademark with the U.S. Patent and Trademark Office (“USPTO”) as an existing-in-use trademark or as an intent-to-use trademark. Basically, official application forms are completed (online), fees are paid, and specimens of use (or of intended use) are submitted to the USPTO for evaluation, publication, and decision. If registration is approved, you will begin using your trademarks on your products, listings, emails, web platforms, packaging, shipping materials, billing, etc.
Legal benefits of e-commerce trademarking
One of the benefits of e-commerce trademarking is the ability to prevent your competitors from using your trademarks on their products/services. This is called trademark infringement, and infringers are subject to lawsuits and substantial monetary damages. You also have the right to send “take-down” notices, which can help prevent piggybacking and hijacking of sales listings. Trademarks also give you various priorities of use with respect to domain names and the like. Registration of trademarks adds another layer of very significant legal protections. These include enhanced potential damages in trademark infringement litigation. Registration also assists customs and border controls in preventing piracy and the importation of counterfeit goods.
Contact the Trademark Attorneys at Revision Legal
For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.
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