US and China Trademarks

The highest priority in your e-commerce journey is intellectual property protection!

This includes trademarks, copyrights, and patents, and is often the make or break of your business. It is so easy to unwittingly give away all your competitive advantage in your rush to get your product listed for sale.

The official registration of a trademark is the very foundation of your e-commerce business. It’s simply too easy to be copied and even find yourself in the position that someone else trademarks your brand and then sends you a cease and desist letter! In order to get full protection, you will need to register your trademark with the Trademarks Office in the jurisdiction or country you would like to obtain protection for your trademark.

Even after obtaining a trademark registration, a business should continue to use it in order to maintain ownership. If a company stops using, abandons, or neglects a trademark, a court may find that it has abandoned its rights. Other companies would be free to adopt and use that abandoned trademark as their own. 

In the US, you even need to submit mandatory post-registration documents in specified time periods to prove that your trademark had remained in use on the products and services listed in your registration.

Some businesses sell their products through Amazon, which has a Brand Registry. The Amazon Brand Registry process allows Amazon sellers (with registered trademarks) two distinct benefits while working under the company’s online umbrella – brand protection and brand support.

Brand protection gives you the power to legally identity counterfeit or deceptive sellers that are encroaching upon your trademark(s).

Brand support means that your inquiries and filings are completed with minimal effort on your (the brand owner’s) end, all while doing business in Amazon’s online marketplace.

To be eligible for these benefits, you need to have a registered trademark (either a standard character mark or a logo with words) in each country where you wish to enroll in Brand Registry. Amazon Brand Registry is also accepting brands that have a pending trademark application in specific trademark offices.

Note that filing an application is not the same as registration – it is actually the first step. Once your trademark is granted registration, you will get a registration number and will be able to apply to the Brand Registry with a guaranteed result. Amazon has improved its Brand Registry by allowing early entry to its registry on the basis of a pending trademark application.

Amazon sellers no longer have to opt for the Amazon IP Accelerator system where only 11 firms are involved. By using IP accelerator services, you will get quick access to Amazon Brand Registry but only for the products which you already sell on Amazon. 

This is a very important distinction. Subsequent listings will not be part of the Amazon Brand Registry until your trademark fully registers. Six months later Amazon will check the status of your US trademark application and if there is an objection and your mark is not registered, they may pull you out from Brand Registry.

So, arguably the IP Accelerator is actually limiting your e-commerce ambitions. We always advise clients to consider a much wider view than simply Amazon. Yes, they have 50% – 60% of e-commerce business which still leaves 40% waiting for you to target.

Other e-commerce platforms are developing at a very fast rate so you are better to own your Trademark process as opposed to tying into Amazon along with the restrictions highlighted above.

Registering a trademark is a time-consuming and complicated process. The complications are not so much in the documentation to submit to a Trademark Office but in your due diligence. The searching for other similar names also includes how a word may sound as an example. So, don’t think that just because of the spelling you are guaranteed a smooth run through the trademarking process.

There is no advantage whatsoever to giving your Trademark a try. You absolutely need to ensure that your first lodgement is as good as you can get it. We’re all short on time and the delay caused by lodging an application that is denied sends you back to the start line. Sure, you could contest it but that would only be if you had a compelling reason, time, and budget to pursue this.

In the US, non-US domiciled applicants are required to hire a US attorney in order to file their trademark in the US. In most countries, a local attorney/representative is necessary. 

All relatively straightforward but what about protection where you are sourcing your product?

China is a first-to-file country. Unfortunately, it is increasingly common for a third party (sometimes your own manufacturer) to file for your trademark in bad faith and then claim infringement over your unregistered brands.

The timely filing of a trademark application in China is essential to minimize the risk of trademark piracy. It is not as straightforward as filing in the US and you surely need someone reliable to act for you. Sure, while your intention is not to sell in China, the trademark owner can stop the shipment of “their” brand of goods at the port. This is often the first time you may be aware of an issue and of course you are then under massive time pressure to resolve this.

It is rare to find a business that can be one point of contact for you to help in both US and China trademark filing. Some of our clients have worked with Trademark Angel and have had both US and China trademarks granted. That said, it is important to realize that filing in China is not easy and they can and do decline registrations for no apparent reason. 

We certainly recommend you consider them if you need help with your trademarking. They also cover many other countries, not just the US and China. They are well worth a conversation as you look for a professional to help you get your Trademark with as little stress as possible!

As always, ask us anything. If we don’t know the answer, we’ll know someone who does!