Amazon Brand Registry Can Protect Your CPG Brand From Counterfeiting & Infringement

TRADEMARK COUNTERFEITING 101

Enrico Schaefer: Welcome to Tech Law Radio. On today’s show, we will be talking a bit about the Amazon Brand Registry. And as many of you know, I focus a lot on helping companies grow and protect their IP. I’m excited about today’s show and the Amazon Brand Registry topic because more people are finding that the best way to sell their consumer goods is on Amazon. Amazon is an excellent opportunity for many companies and presents many challenges in the fight against patent violations, trademark infringement, counterfeit goods, and enforcement of MAP pricing. 

Counterfeit Goods And The Amazon Marketplace:

Many clients are worried about counterfeit goods, imitation goods, and copyright or trademark infringement on the Amazon platform. I’m excited today because we’ve got David Maloney on the show. David has outstanding expertise in the Amazon platform and how to protect your company and products against counterfeiting. 

David has over 17 years of experience supporting brand protection, intellectual property, and organizations’ product activities. He’s worked for Whirlpool Corporation to do brand protection and remove counterfeit products from unauthorized sellers on Amazon and other marketplaces. He has got experience with the IACC, which many of you know is a fantastic organization. It’s the International Anti-Counterfeiting Coalition. And so he knows how that organization works. Let’s welcome David to the show. How are you doing today, David?

David Maloney: Thanks for having me, Enrico. It’s nice to be here on the show.

Enrico Schaefer: Let me ask you a little bit about your prior background. Please give us the highlights and maybe a little bit of your expertise beyond the simple introduction that I gave you a little bit earlier.

Brand Protection on the Internet Requires Expertise.

David Maloney: Sure. I’m a brand protection and IP professional. I’ve been working in these industries for about 17 years, supporting property, brand protection, and production activities in the automotive and consumer product spaces. I’ve helped engineers, salespeople, and e-commerce people with doing brand protection, enforcing property against counterfeiters, infringers, and most recently, working on Amazon doing my brand enforcement and takedown against patent infringers and using the brand owners of intangible property to position their product to get sold on Amazon by removing the violating sellers and their products. It’s been very successful, and Amazon has been responsive to the techniques I’ve been using. 

Enrico Schaefer: What many clients seem to understand well is when they see something they don’t like on Amazon. They get highly motivated.

David Maloney: Yes.

Enrico Schaefer: But there’s more to it than that. We’ve always encouraged our clients to be very proactive and protect their brand. Your brand is your reputation. Your reputation is everything. And if something happens to your reputation due to counterfeit goods or trademark infringement, those can have severe ramifications on your valuation and your customer experience. So these are very serious matters.

Counterfeit consumer goods are often of inferior quality, made or sold under another’s brand name without the brand owner’s authorization. Sellers of such goods may infringe on either the brand owner’s trademark, patent, or copyright by passing off its goods as made by the brand owner.

Wikipedia

It’s far better to be proactive when you see a problem as a brand than reactive. Try to put out the fires early or stop them from occurring in the first place. Let’s talk a bit about some of the brand protection trends and statistics, and resources for a business owner looking to enforce their IP and prevent price erosion.

Accurate Brand Representation: 

Once you enroll, Brand Registry gives you more significant influence and control over your brand’s product listings on Amazon. 

Powerful Search Tools:

Amazon Brand Registry enables you to find content in different Amazon stores easily. Search for content using images, keywords, or a list of ASINs in bulk and report suspected violations through a simple, guided workflow.

Proactive Brand Protection: 

Our automated protections use information about your brand to remove suspected infringing or inaccurate content proactively. The more information you provide, the better Brand Registry can help you protect and improve your brand experience.

Amazon Brand Registry:

David Maloney: Amazon is a vast seller online, and they implemented Amazon Brand Registry about three or four years ago, and it continues to grow and allows brand owners to register, tell Amazon what their intellectual property is and enforce against counterfeits and other violating sellers.

Amazon Is Motivated To Protect Brands.

In 2018, Amazon invested 400 million dollars hiring about 5000 workers on Brand Registry to handle takedowns of violating products. Amazon heavily invests in this issue, and they continue and want to grow their product selection to compete on the marketplaces; specifically, Alibaba in China. They must keep their reputation for having authentic goods up there so that people can go and purchase their product and know that they’re getting a genuine product. 

It’s a constant threat, and it continues to grow, and Brand Registry allows individuals, sellers, and corporations to get up there and submit requests and takedowns. In 2016, Birkenstock stopped selling directly off of Amazon because of the counterfeit sellers. Most recently, in January of this year, IKEA said they’re not going to sell their products directly off of Amazon now. Third-party sellers were selling fake IKEA products.

Major corporations are now taking notes that Amazon might not be the best place to sell. But, we also have to understand Amazon is so powerful and ever-growing that they’ll have to find other channels. Brand Registry is essential for startups, brand owners, and native corporations to protect their reputation and ensure that the consumer feels that they’re getting a genuine product.

Enrico Schaefer: Right. Brand Registry is not perfect, but it is a step in the right direction for brands. And the thing that motivated Amazon is they were starting to lose merchants due to all the counterfeiting. I believe that Amazon also wanted to streamline its internal process to handle this incredible volume of people complaining and reporting all kinds of IP issues across their platform.

So with that, Amazon Brand Registry was born. So tell us, David, a little bit just the nuts and bolts. How does the Brand Registry work for your customers? How do you get them into the Brand Registry in the first instance?

Preventing Price Erosion & Diverted Sales Provides Real-World ROI.

David Maloney: Our corner is going to say, “Hey, people are counterfeiting our products, and people are selling our products on these marketplaces. How do we stop them, and how do we protect our sales and prevent price erosion that occurs on the marketplaces from the constant driver of getting low prices?”

After that, the business owners will make a decision. They might seek out an attorney. They’ll then probably eventually go to Brand Registry and try to register. To get registered, you’re going to need a registered U.S. trademark. If you’re in the United Kingdom, you’ll need a U.K. trademark for that respective country and Amazon Registry U.K. To do that, you’ll need to file an application, which could take 6, 10, or more months to get a registered U.S. trademark, and then you can apply to the Brand Registry. 

That’s important to start today. Get your trademarks in place for your brands and your products, whether you’re a startup or any other type of larger business. The most important thing is to get your IT in place, and from there, you can apply to the Web site of Brand Registry. It’ll take approximately five weeks to get authorized and registered on Brand Registry. Then you’ll submit your agents, which is the product number for Amazon. It then gets approved by Amazon based on your reputation, sales volume, trademarks, and how serious you are using Brand Registry. 

It’s a little bit of a process there. Still, brands need to do this as the markets will continue to grow. You need a trademark and patents, specifically design patents, especially on marketplaces, to enforce your business processes and your products later on.

Enrico Schaefer: It’s interesting because we do many of the threat letters and the litigation side as the lawyers. Brand Registry should accomplish the client’s number-one goal, which is getting it taken down. That’s the immediate pressure. That’s not going to happen overnight. But Brand Registry is a step forward in helping to make that happen.

We can, as the IP lawyers, send a threat letter. However, many of the folks engaged in counterfeiting or IP violations are sophisticated about hiding themselves. They may even be outside the jurisdiction, meaning there are limits to what can happen on the legal side. If you’re going to get involved in litigation, it will cost you a lot of money.

Brand Registry might allow you to get the products removed, and it’s going to be a more cost-effective solution. Let’s talk a little bit about submitting takedowns, David. How does that process work once you’re a brand that is in the registry?

Dealing with Counterfeiting at Scale Can Be Frustrating.

David Maloney: Once you’re registered, you’ll make some internal processes or use a provider to set up your system. You’ll then submit the takedowns with a cut-and-paste blurb of why this product violates your intellectual property, is a counterfeit, or is an unauthorized seller. You’ll create a blurb or a legal argument to say, “This is our intellectual property, and this is why the violating product should be taken down.” This process could include your U.S. trademark registration, U.S. patent or design number, utility patent or design patent or copyright.

You’ll put this in a blurb, and you’ll submit a takedown. Hundreds of takedowns could start that then reach the thousands, depending on how diligent a brand owner is. So it begins an extensive process that people do not often understand. We want the counterfeit taken down, but how many resources should we dedicate to this, and how big is the problem? Sometimes it’s hard to determine that. In organizations, maybe the salespeople aren’t watching or monitoring the reasons for competition or not speaking with their legal departments, representatives, or outside counsel. 

Sometimes it’s a problem of ownership of who’s watching competitors and unauthorized sellers in the marketplaces. Being registered with Brand Registry gives you the advantages of customizing and managing your product listing information. This information could be the title, the description, the words, the images or the packaging, and other unauthorized sellers. 

Knowing When to Escalate.

Violators will copy your package and put their brand name in there. They could manipulate their product numbers and change characters to get around algorithms built into Amazon Brand Registry and their proactive takedown technology. There’s importance to being registered and having those advantages to control your content. Brand Registry also offers you other features such as text searching and product image searching analytics.

Those are excellent features, but the process can become overwhelming sometimes. Amazon has its internal functions and representatives trying to do their best to help the brand owners. Still, it can become whack-a-mole –the game from 1976 where the person is continually whacking a mole down–, and it’s a similar type of feeling when you can’t control what’s going on in the marketplaces.

A lot of attention needs to be built into the processes. But you also need to step back and say, “Okay, what works, and when do we need to escalate it?” You can escalate it to an attorney, threat letters, and other types of legal actions. But you need to be able to monitor it and ask, “Is the money we are spending is worthwhile?”.

Enrico Schaefer: David, this is a great time to discuss Sentinel Brand Protection, which is your brand protection company. The truth of the matter is if you are an Amazon seller, and that’s your company and your business model, in which case you are probably doing Brand Registry yourself, you’ve got the expertise. However, that’s not the case with many people trying to protect their space on Amazon as a brand.

Tell us a bit about what your company, Sentinel Brand Protection, would be doing for a brand to help navigate this whole process, manage the process, and understand which moles should be whacked.

Which Moles Should Be Wacked?

David Maloney: We specialize in online brand protection for Amazon Brand Registry and other marketplaces. There are similar types of platforms such as eBay, [Barrow], and Alibaba. We’ll specialize in working with the client to put a lot of effort into finding the problem. People often don’t even know what the problem is. They see a counterfeit image up on the Internet, and then it’s sent to a salesperson or a legal person like, “What is this?”. 

You Need a Brand Protection Process Based on ROI.

What we’ll do at Sentinel is define the problem, give you a summary of what’s going on, data points, evidence of what’s happening in the marketplace, analytics, etcetera so that you can understand the landscape of the violations. That way, you know up front and can determine where we want to dedicate resources.

This dedication could be to Amazon or another marketplace. It could be to other types of plan protection, like escalating it to an attorney or even litigation. We define the problem, define the project, define your expectations, and perform the work. The key of business is Amazon Brand Registry takedown or whatever the investigation might be to get you the intelligence for your business to operate properly and protect your sales and profits. 

The Key to Business:

Enrico Schaefer: It is the key. It’s the number-one motivator for customers and clients because they are worried about many different things. Their businesses have several other challenges and opportunities they’re trying to navigate every day. Sometimes it’s the fire that’s burning the hottest that gets the attention, and that’s fine. That’s always going to be the case. However, there’s excellent ROI here if you do Brand Registry correctly. You don’t have to have a raging fire to contact Sentinel Brand Protection to get into the registry and start protecting your brand. David, do you have any examples that are anecdotal stories of how the system works well for your clients?

Inept Takedown Requests Can Spoil It For Everyone.

David Maloney: Sure. As I mentioned, data and the Internet are so vast and growing that it’s hard to manage what’s going on. There are people out there who make complaints to Amazon and kind of screw up the process by creating noise and distractions, confusing Amazon, and confusing people within a company. So it’s crucial to be able to do the research necessary to get a factual explanation of what goes on to make good decisions and judgments. 

Some experiences I’ve had are kind of what I mentioned earlier. There are big complaints by other sellers or people interfering with your brand. It could be defamation or other stories that are compromising your brand integrity. When you understand the problem upfront, it makes a big difference later on. You could have a person spending hours and days on thousands of complaints, and it might feel useless. You keep seeing listings up there. How do you know whether it’s working? Are your sales increasing? Are they going down? Or who is selling the product? Is it coming from another country, a seller in Asia? Using metrics to watch for patterns and provide the client that data and understandable form is key to making good decisions.

Enrico Schaefer: Yeah, it is because what I find with a lot of our clients on Brand Protection issues, not even Amazon-specific, is that sometimes it just feels very frustrating for the brand because they see the breadth of all the different problems that are happening on the Internet, and it makes them throw their hands up in the air, like, “I give up” before they even start.

Pick Your Fights Carefully. You Can’t Put Out Every Fire.

And what we tell clients is, “It’s not about putting out every fire. It’s not about whacking every mole. It’s about finding the ones that are the most serious and the ones that are going to provide the most ROI and dealing with those.” I think many companies fail to understand that if they don’t protect, for instance, their trademarks, they could potentially lose their trademark rights. They diminish the enforceability of those trademark rights if they’re not at least able to show that they’re engaged in activities of protection.

Enrico Schaefer, Litigation Attorney

If you’re doing nothing, then chances are you’re going to have a hard time protecting your IP in the future. You have to have a sustainable, ROI, and priority-based program. If you do those things and put out the hottest fires along the way, you’re increasing your brand value.

David Maloney: For sure. This area continues to grow. Brand protection has grown every year for the last 15 or 20 years. And it gives an excellent opportunity to prove in evidence that intellectual property has value. You can give your intellectual property and enforce it on a marketplace. You can see whether it’s made a difference, whether that design patent or the trademark has proven effective to deter counterfeiters and people from violating your band.

Enrico Schaefer: Yeah, it is more important than I think many brands understand, and it is becoming more critical because of the Internet. Tell us a bit about the IACC and third parties as part of this brand protection process.

David Maloney: Sure. IACC partnered with Amazon about two years ago. As a third party to their Amazon Brand Registry, they allow brands to escalate a complaint. If a takedown goes through a registry and has not come down after 48 hours or three or four days, a brand owner can escalate it to IACC. 

The installation is just that; it goes to a higher-level person. IACC will try to understand the brand’s processes and say, “Why didn’t this come down?” Was it because the brand didn’t describe the intellectual property well? Was it because the representative didn’t understand it, or are they just not doing their job because sometimes it gets tedious? So they offer another way to enhance the Brand Registry to be sure that their processes and their people are doing their job well. It’s a good program, and it’s just another step in brand protection that continues to grow.

Enrico Schaefer: What else can you tell us, David, that you think is essential for brands to know about the Amazon Brand Registry and the services that you perform for brands?

Every CPG Should Apply For The Amazon Brand Registry.

David Maloney: I would encourage every consumer packaged goods company to register on Amazon Brand Registry. It’s becoming a growing seller, of course, and people continue to purchase online with Prime. 

I think it’s important to take the efforts, even small steps because continuing those steps becomes a major program later on. By doing nothing, you get nothing for a result. By getting online and investing in brand protection and intellectual property for your company, you at least are taking the steps necessary to maintain your intellectual property and protect your brand.

As people see other major corporations develop this function, I think that other people will realize that they need to take some steps, especially if they start seeing counterfeiters and their sales dropping.

Enrico Schaefer: Yeah. Unfortunately, that’s the most motivating. I’m sure your company is like mine, and we encourage people to get out ahead of it, but we also understand that there is a problem of priority. When things start to go wrong, and counterfeit goods begin to pop up, and they’re underpricing you, you get highly motivated.

Please tell us how people get in touch with you at Sentinel Brand Protection if they’re looking for someone to take charge of the marketplace aspect of brand protection in the Amazon registry.

David Maloney: Sure. Our website is www.sentinelbrandprotection.com. You can go there, and our contact information is up there. You can reach out to us either by email, telephone, or through LinkedIn. Feel free to go up on the website. 

Enrico Schaefer: David Maloney, thank you for being on the show today. We have had a great discussion about the Amazon Brand Registry and online brand protection. I am attorney, Enrico Schaefer, and we’ll see you next time.