Five things to know about protecting IP rights on Amazon

Introduction
Online form for reporting infringement
Utility Patent Neutral Evaluation programme
Utilising brand registry to increase effectiveness
New anti-counterfeiting programmes
Developing an Amazon enforcement strategy can have a significant impact

Introduction

The COVID-19 crisis has made protecting IP rights from infringement on Amazon more important than ever. With people encouraged to stay home and retail stores closing across the United States, Amazon sales have surged. In this climate of increased sales, IP rights owners must be especially active in enforcing their rights against Amazon sellers of infringing products. Fortunately, Amazon provides numerous tools that rights owners can use to monitor for infringement and seek the removal of infringing listings.

Online form for reporting infringement

Amazon provides a publicly available online form for rights owners to report infringing listings. This can include reports of trademark infringement, design patent infringement and even utility patent infringement. Anyone with a federal trademark or patent can report infringement. One caveat with respect to patent infringement is that if a patent owner cannot direct Amazon to a federal court or International Trade Commission (ITC) decision finding patent infringement, Amazon will not remove the reported listings.

Utility Patent Neutral Evaluation programme

For patent owners without a court or ITC decision finding patent infringement, Amazon has introduced a new, experimental programme for quick and cost-effective adjudication of patent disputes: the Utility Patent Neutral Evaluation programme. Under this programme, a patent owner can assert one claim of one unexpired US utility patent against sellers of infringing products on Amazon. Amazon then selects a neutral, third-party patent practitioner to act as an arbitrator. Aside from non-infringement, the only defence that a seller can assert is invalidity based on:

• a prior district court, ITC or United States Patent and Trademark Office decision finding the patent invalid; or
• independently verifiable evidence that the accused product was on sale more than one year before the patent's earliest effective filing date.

No discovery is allowed and the dispute will be decided based only on the briefing. If the evaluator decides that the patent is likely infringed, Amazon will remove the seller's listings. Importantly, an evaluator's decision finding infringement can be relied upon in the future for purposes of filing traditional infringement reports via the online public form or Amazon's brand registry.

Utilising brand registry to increase effectiveness

Amazon allows owners of federal trademark registrations to enrol in its brand registry programme, which provides a host of IP-related tools. Brand registry members can submit infringement reports, which is similar to using the online form, but they can also:

• utilise enhanced search features;
• get additional feedback from Amazon on the status of filed infringement reports;
• work with Amazon's brand protection teams; and
• generally be more effective at having Amazon act on infringement reports to remove infringing content.

Amazon also provides brand registry members with a host of additional tools for combating counterfeiters and other types of infringer, such as Project Zero.

New anti-counterfeiting programmes

Amazon has been unveiling new programmes aimed at boosting brand owners' anti-counterfeiting abilities (for further details please see "Amazon launches new Counterfeit Crimes Unit"). One such programme is Project Zero, which is available to certain brand owners and allows them to remove infringing content from Amazon themselves. Another such programme is Amazon's Transparency programme, which allows brand owners to apply unique codes to their products, which Amazon employees can scan in warehouses and customers can scan on products that they receive to ensure authenticity. These programmes and other initiatives have great potential to reduce sales of counterfeit products on Amazon and ensure that customers receive genuine products.

Developing an Amazon enforcement strategy can have a significant impact

Carefully developing a well-thought-out Amazon enforcement strategy can substantially increase effectiveness while limiting costs. Rights owners should consider the available mechanisms for seeking the removal of infringing content, assess the IP rights that they could assert against Amazon sellers and survey the landscape of infringing sellers and products on Amazon to determine how to be most effective. Rights owners should also consider in advance the logistical issues that may be involved with enforcing rights on Amazon (eg, the cost of making test purchases or analysing products for infringement) and consider how to make enforcement as seamless and cost effective as possible. Working with experienced counsel can greatly assist in dealing with these issues and developing an overall plan to achieve maximum impact while containing costs.

For further information on this topic please contact Dennis J McMahon at Venable LLP by telephone (+1 410 244 7400) or email (dmcmahon@venable.com). The Venable LLP website can be accessed at www.venable.com.