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.

Trade Dress IP

Trade dress
Tux in Trade Dress?

Trade dress is a trademark type of IP covering the artistic context in which products or services, including digital services (websites), are presented to customers.

As legally defined in the US, trade dress is a trademark type of IP that covers the designation of origin (who made it) connected with goods or services used in commerce.  It is focused on the overall artistic context (e.g. artistic impression as a whole). It can cover distinctive containers (packaging) for goods. It can also cover store or restaurant decor, website designs, and other miscellaneous “look and design” issues. The designation can be “any word, term, name, symbol, or device”. These latter two terms are pretty expansive and can include colors, shapes, and sounds.

Like all trademarks, trade dress can’t be functional, and instead only covers distinctive artistic elements. This is due to social policy considerations. Trademarks can potentially last forever.  However, in earlier centuries, it was found that locking up “function” forever causes monopolies that can hurt the economy. Thus functional IP falls under patent law instead.  Patents have far stricter examination criteria and only a 20-year lifetime.

Trade dress examples include the shape of Coke bottles, the brown color of UPS trucks, McDonald’s golden arches, the layout of Apple’s retail stores, and even Homer Simpson’s D’OH sound!

The US legal system is still working to define the extent to which websites and other digital items fall under trade dress law.  Courts may rule differently depending on the jurisdiction. The Federal 9th circuit, for example, determined in 2016 that the visual layout of digital reports can be covered, so long as the visual layout is not functional.  This is present law in California and other western states.

Thus, for example, it is not a good idea to try to copy the distinctive layout of the Facebook website, at least in the social network space. You may think you are avoiding copyright infringement by using different text and images. You may think you are avoiding patent infringement by using different technical methods.  But copy the trade dress, and you may still end up in trouble. Indeed, Facebook has a history of litigation in this area! The same advice applies with respect to other distinctive websites as well.

Like all trademarks, trade dress IP rights may also exist under state law and common law. Thus, the absence of Federal trademark registration is not an automatic “all clear” signal. Hidden problems may still exist.

As a rule of thumb, try to avoid copying the look and feel of a competitor’s website, or other digital output, too closely. If your competitor’s website has some distinctive visual or sound elements, consider making a different choice.

On the other hand, perhaps you have achieved a unique look, feel, or design for your website, service, or product packaging. One that you think customers will like and start to associate with you. If so, consider filing a trade dress trademark application for your particular class of goods or services.

Nice Trademark Classes

Swimmer
Trademark classes are like swim lanes

Welcome to the International Nice Trademark Class system, where we attempt to fit all types of goods and services into only 45 different classes. The results can be a bit strange!

As previously discussed, trademarks help protect the public from accidentally purchasing inferior products from unscrupulous business. Trademarks also help protect legitimate business from inferior knockoffs as well.

As economic growth and international trade expanded, trademark law encountered problems.  There were more products and services than there were good trademark names. Legal mechanisms needed to be created to allow similar trademarks to co-exist.  But this could only be in cases where the products and services were so different that customers would not be confused.

The trademark classification system evolved to allow at least some recycling of similar trademark names. But this is only allowed between very different types of products and services. The underlying concept is somewhat similar to the idea of “area codes” and “swim lanes”.  Think of all economic activity as being a “swimming pool”. The trademark classes divide up this swimming pool into a series of defined “swim lanes”. Any given area of economic activity thus has its own designated “swim lane” (trademark class).

The Nice classification system

Originally, every country defined its own country-specific trademark classes (swim lanes).  This created a lot of international trade confusion. To standardize this process, various countries met in Nice France in 1957. They adopted an earlier (1935 era) proposal and established a standardized list of 34 different trademark classes. This was originally just for trademarked goods. Later, 11 additional trademark service classes were also added. This brings us up to the present total of 45 goods and services. So at present, the trademark swimming pool (“all of commerce”) has 45 swim lanes. This is called the “Nice Classification”.

As might be expected from a 1935-era based classification system, it is a bit dated. Products in general use before 1935 tend to get more than their fair share of different trademark classes. More modern products and services tend to get crammed into a relatively small number of trademark classes. But this is the internationally standardized trademark law system we have, get used to it.

Why do we care?

Nice trademark classes are important when registering new trademarks. They are also important when trying to see if there are conflicts between trademarks. As a rule of thumb, if two similar trademarks describe products or services that fall into different Nice classes, then this is usually OK.  Trademark law will tend to assume that customers will not be confused.  But if two similar trademarks describe products or services that fall into the same Nice class, things may not be OK. There may be a possibility of confusion.

So, if you are filing a new trademark, it is important to specify what types of goods and services you are selling or planning to sell.  This allows the attorney to determine the Nice class for the goods and services.  A proposed trademark that may be totally fine for some Nice classes could be a total non-starter for other Nice classes.

International Trademarks: Madrid Protocol

Madrid Protocol countries
Madrid Protocol countries (US color or darker is “in”)

For US companies, the Madrid Protocol can be a low-cost and time efficient way of getting international trademark protection.

The internet makes it almost trivial to sell products and services internationally.  But how do you manage the IP for these products and services? The legal system has been lagging here. Although the 1970’s (pre-internet) PCT system simplifies the process of filing international patents, the underlying international patent system still remains cumbersome and expensive.  In the end, you still have to hire local law firms in each country and work with the local patent offices.

What is the situation in trademarks?  Almost reasonable!  This is because, in the early post-internet era, the international trademark system got a major upgrade, called the Madrid Protocol. So if you are a startup wanting to protect your trademark rights internationally, the Madrid Protocol is a reasonable and cost-effective way to do so.

The Madrid Protocol is a 1996-era refinement of an earlier 1891 Madrid trademark agreement.  The US and over 90 other countries (EU included) are presently members (see the darker countries on the world map), with Canada expected to join in the 2017 to 2018 timeframe.

The main advantage of the Madrid Protocol is that the applicant needs to only file once in the WIPO Madrid system in order to apply for trademark applications in a variety of different countries (such as the entire European Union at a single time).  The application fees, at least by patent standards, are reasonable (e.g. about $1600 to apply for full EU coverage).  This system minimizes the hassles and expense of hiring local law firms and dealing with local trademark offices in each country.

There are a few catches – the applicant must be associated with a Madrid subscribing country, so US based companies can do this; but Canadian companies — not quite yet.  You can’t start from scratch – rather you should have at least one national trademark application pending (and preferably issued), to form the basis of your Madrid application.  US applicants, for example, can use their pre-existing US trademark to file for Madrid coverage through the USPTO. The USPTO will check this Madrid application, and then forward it to the WIPO office in Geneva, Switzerland.

Some other cautions — in the event that your original national trademark application fails within the first five years after filing, your other Madrid filings will likely also fail. Additionally, the various local countries that you designate do have the right to refuse your trademark on an individual basis within the first 12-18 months after filing.

So additional research before filing is recommended.  At a minimum, check the WIPO trademark database for conflicts. Check if your US trademarks might be “generic” or otherwise inappropriate in your Madrid target countries.  Madrid Protocol filings must be renewed every 10 years, so remember to put this on your long-term calendar as well.