Amazon and IP disputes

The court of Amazon

Amazon.com is enough of an 800-pound-gorilla that its IP policies can impact trademark, copyright, and patent strategy. Amazon is not kind to descriptive (supplemental register) trademarks.

Amazon.com markets products from millions of manufacturers and vendors, resulting in a large number of IP (trademark, copyright, and patent) disputes.

Unfortunately, the US court system is designed to administer slow, careful (and thus expensive) justice to a small number of IP litigants. It can’t scale to Amazon volumes. So Amazon decided to make its own IP dispute process.

Trademarks:

The Amazon Band Registry offers a number of methods to help trademark owners protect their rights and promote their products. However, at least for the US, just any trademark won’t work. The Amazon Brand Registry is presently only available for USPTO trademarks on the principal register. USPTO supplemental registry trademarks are out of luck.

The USPTO supplemental register is where otherwise OK, but “descriptive” trademarks are put to “age” for 5 years until the mark is considered to have “acquired distinctiveness”. So, the moral is that if you are planning to sell on Amazon, it is good to avoid the supplemental register. This can be done by registering a less descriptive product name.  There are trade-offs here, however, since descriptive names help customers understand the purpose of new products.

Copyrights:

Be careful about the text and images that you upload. It should either be your own material, or material that you have clear rights to (e.g. license, resale of previously purchased physical items). Amazon operates a Digital Millennium Copyright (DMCA) infringement reporting system that you (and others) can use to report issues. If you hold copyrights that you feel are important, consider registering them with the US copyright office, as this can make enforcement easier. Note, however, that under their terms of service, Amazon acquires a license to use your uploaded material.

Patents:

Amazon has recently announced a pilot patent dispute program.  The process is fast and (for patent law) inexpensive. The plaintiff provides the US patent number and the Amazon listing of the allegedly infringing product. Both parties can argue this (e.g. one submits written arguments for infringement, and the other submits written arguments in defense).  Both can pay $4,000 to submit their arguments to an Amazon selected neutral patent evaluator. The neutral evaluator evaluates the patent and product in question.

The winner gets their $4,000 fee back. The loser loses its fee. If the allegedly infringing product loses, Amazon will take down the listing. The neutral evaluator’s decisions are apparently final, but you can still go to the court system if you want.

Disclaimer: I have no affiliation with Amazon. Amazon IP policy can change at any time. However, Amazon is enough of an 800-pound-gorilla that their IP policies are having an impact on the IP ecosystem.

Design patent rocket docket

Design patent rocket docket

Want to get your design patent application examined quickly? The USPTO’s design patent “Rocket Docket” cuts examination time down to only a few months, but requires that you put more effort (and fees) into your initial filing.

The USPTO’s design patent “Rocket Docket” (their term for a request for expedited examination of a design application) can cut the overall length of time that a design patent waits to get initially examined down from about 13 months to about 4 months. So if you would like to get your design patent examined quickly, consider filing your design patent using the “Rocket Docket”.

Here, more than just extra fees are needed. The USPTO also wants you to expedite their prior art search process.

Why this? Although some countries merely register designs without checking them for originality, the USPTO is required to check your design against other prior art designs. Although most new design patent applications pass, some are occasionally rejected for lack of originality or obviousness.

This prior art search is not that easy. Usually, prior art searches are done by searching for matching keywords. However, unlike other types of intellectual property, designs have hardly any keywords. Design patents are almost 100% images, and often the only unique keywords are in the title, and these are often useless. Perhaps in the future, the USPTO will turn to Machine Vision/AI type searching methods and do direct image-based prior art searching, but they are not there yet.

So given these difficulties, the USPTO will make a deal with you. If, in addition to submitting a competently done design patent application (and fee), you also help them with their prior art search and pay an additional fee, they will go faster. This additional “Rocket Docket” fee is called a 37 CFR 1.17(k) fee, and usually is a few hundred dollars (presently about $450 for small entities).

How do you help them with their prior art search? The USPTO requires a bona fide (i.e. a serious and competent) prior art search, such as one that might be done by an experienced searcher. They want documentation, on an SB27 form, of the various patent fields examined during this search, as well as what specific applications your design might be used for. They also want any relevant citations that turn up during this search to be reported on an IDS (SB08) form. It is not a good idea to cut corners here, because if this part looks too sketchy, the Rocket Docket request may be denied.

So although the extra Rocket Docket fees and search expenses cost more, if you are facing competitors, or if your design is in an area where rapid introduction of cutting-edge designs is particularly important, consider this option.