Episode 37 – A Top Amazon Trademark Strategist Helps Shine A Light On Amazon Brand Registry Trademark Requirements

Not sure if you need a trademark? In this Serious Sellers Podcast, Anita Mar, an authority on Amazon brand registry trademark requirements speaks to Helium 10’s Director of Training and Customer Success, Bradley Sutton about why it’s important and the mistakes that many sellers make on the often-complicated road of trademarks and Amazon brand registry.

In episode 37 of the Serious Sellers Podcast, Bradley and Anita discuss:

• 00:37 – An Introduction to Anita
• 01:50 – Anita’s Path to Trademark Wisdom
• 03:20 – Brand Registry 2.0
• 04:20 – Vocabulary Lesson – Trademarks, Patents, and Brands
• 05:40 – Trademarks and Brand Registry
• 08:43 – Once I Register, I’m Done? – Maybe Not as Simple as That
• 11:55 – Cheapest Way to Protect Your Product
• 13:30 – Additional Benefits of Trademarks to Amazon Sellers
• 17:20 – Always Start with a Trademark Search
• 20:15 – Mistakes Sellers Make
• 25:18 – Advice to Amazon Sellers
• 29:55 – How to Contact Anita

Enjoy this episode? Be sure to check out our previous episodes for even more content to propel you to Amazon FBA Seller success! And don’t forget to “Like” our Facebook page and subscribe to the podcast on iTunes, Google Play or wherever you listen to our podcast.

Want to absolutely start crushing it on Amazon? Here are few carefully curated resources to get you started:

• Freedom Ticket: Taught by Amazon thought leader Kevin King, get A-Z Amazon strategies and techniques for establishing and solidifying your business.
• Ultimate Resource Guide: Discover the best tools and services to help you dominate on Amazon.
• Helium 10: 20+ software tools to boost your entire sales pipeline from product research to customer communication and Amazon refund automation. Make running a successful Amazon business easier with better data and insights. See what our customers have to say.
• Helium 10 Chrome Extension: Verify your Amazon product idea and validate how lucrative it can be with over a dozen data metrics and profitability estimation. 
• SellerTradmarks.com: Trademarks are vital for protecting your Amazon brand from hijackers, and sellertrademarks.com provides a streamlined process for helping you get one.

Transcript

Bradley Sutton: Not sure if you need a trademark for your Amazon business. We’re going to talk to Anita who’s going to tell us why it’s important and a lot of the mistakes that some sellers make when getting trademarks.

Bradley Sutton: Hello, everybody. This is Bradley Sutton, and this is another episode of The Serious Sellers Podcast, and we try to bring guests from all different walks of life who all have different experiences, different knowledge, different tips and tricks and strategies that they can share with us. And today I have with me Anita Mar, who is a well-known expert in the field of trademarks, and that is a very buzzing keyword amongst Amazon sellers these days. Actually, both on and off of Amazon. So, Anita, thank you for coming on the podcast with us. How’s it going?

Anita Mar: Oh, hi Bradley. It’s great. I’m here in Sunny, Florida.

Bradley Sutton: No, you don’t normally live in Florida, do you?

Anita Mar: I don’t normally live in Florida, so I was hoping to pretend nobody will notice that.

Bradley Sutton: I’m assuming that like for example, my parents in the wintertime, they actually go down to Mazatlán, Mexico. They have a house down there for the wintertime. Is that a similar reason why you’re there? Is where you’re from like a lot colder?

Anita Mar: Yeah, I live close to Detroit. So yes, in the winter we go to Florida for about six weeks, and this here we went hoping to see some warm weather, but it’s been a little bit gloomy but still much better than in Detroit, so can’t complain.

Bradley Sutton: Oh, I can imagine. Yeah, wasn’t Detroit, one of those places that were hit by those cold—I forgot what the word is—but cold fronts or something where it was like subfreezing and stuff. So yeah, definitely better in Sunny, Florida.

Bradley Sutton: Tell me a little bit about how you got involved with trademarks in general. I mean, this is not just something like, “Hey, when I grew up, I would like to be a trademark expert.” But how did that happen?

Anita Mar: Yeah. Actually, it’s quite interesting. I was in my twenties and it was in 1999; I was living in Tel Aviv in Israel at that time.  I was looking for a job, and I saw an ad in a newspaper that an American lawyer is looking for a trademark paralegal. I knew what American lawyer meant, but I didn’t know a trademark or paralegal meant. I found that was quite interesting. So, I applied and that’s how my affair with trademarks began. It was by accident, but that’s what I’ve been doing since 1999. Definitely, it’s not something that you decide to do because it’s such a narrow field, and most people, don’t really know much about Trademark or IP in general.

Bradley Sutton: Okay. I find all of this is new information because actually you and I have never met in person, and I know you were on the AmPm Podcast before with Manny with the episode about trademarks. That’s still up there on the site, but I’m embarrassed to say that was one of the episodes I did not have a chance to listen to. So this is kind of cool. Now that I knew I was going to do a podcast with you, I purposely didn’t listen to it because I wanted to have a completely fresh viewpoint here and try to see naturally what kind of questions I have that I think many sellers have. And one of the first things I wanted to talk about is correct me if I’m wrong, but in order to get brand registry 2.0, your brand needs to be trademarked, is that correct?

Anita Mar: Yes, right. You need to register your brand as a trademark at one of the countries, not necessarily the US. You can register your trademark in the US and UK, Germany, Spain, Italy, European Union. On amazon.com, there is a list of countries that they accept, but obviously, amazon.com is a US marketplace, so a US trademark is the one that will work the best.

Bradley Sutton: Okay. I should have asked this probably first, but just a step back, what are some of the differences in the vocabulary here? Like, what is the difference between a trademark, patents, copyright? I know we’re talking about trademarks, but what are some of the differences here?

Anita Mar: So first of all, many people are confused. Like what does brand mean? Like what is brand and what is a trade, and of course what is the difference? Well, really there is no difference. A brand is just a business name for the name of your product. Trademark is a legal term, so it’s the same, but you’d register a trademark you don’t register a brand. The patent protects an invention or an improvement to an invention. And copyright protects literally work or artistic work. Songs, books are protected by copyright, images as well. So that’s the difference; they all are parts of IP, intellectual property. When you give it a name, so that’s a trademark. Trademark is the name of your product. it’s a source identifier. So that’s what customers see when they look for your specific product. They don’t necessarily remember the long company name. They just remember that name, that catch name that you gave your product. So that’s your trademark. That’s how your customers remember you.

Bradley Sutton: So, you had mentioned that it wasn’t necessarily the brand, but I thought that it’s a brand registry. You’re not trademarking each product; you’re trademarking the name that you’re known by on Amazon or what exactly does a seller need to trademark for the brand registry?

Anita Mar: Actually, it’s a very good question. That’s what like many Amazon sellers have, and they get really confused, and I can see where the confusion comes from. When you register your company name, you just register the company name and that’s it. I mean, you don’t really need to specify anything when you register your domain. I mean, you have the domain so you can put whatever you want there right on your website. But when you register your trademark, it’s not like you take a trademark and file it. And that’s it, you have the trademark and you can use it as an umbrella trademark. That’s what many people use. When you file your trademark in that trademark application, you have to list specific products and specific services. So you can’t just say this is the trademark and that’s what I’m going to register without mentioning what exactly you’re going to sell.

Bradley Sutton:  Is it what kind of products you’re going to sell or you literally have to say the exact product names?

Anita Mar: Yeah, you need to be quite specific. All products and services are divided into groups and those groups are called classes. So you need to list those products and those products need to be classified. Some of the products can be quite broad. For example, cosmetics are acceptable. It’s quite a broad term. It can be like any types of cosmetics, but some of the products can be quite specific. For example, the software is not specific enough. You need to specify who the users are, who it’s for, what it does if it’s downloadable or non-downloadable. It depends on the actual products. Some of them need to be really, really specific and dependent on the material they are made off. You need to further specify. For example, if you sell bracelets, you need to say whether they have precious metal or non-precious metal. So this is where it gets complicated. You can’t just file and say, I sell kitchen products. That’s too broad. It’s vague. It will not be accepted. So for kitchen products, you need to say what they are like, lemon zesters, pizza peels. Is it like spoons, forks or maybe, plates, maybe disposable plates? So you need to be really, really specific.

Bradley Sutton: Okay. Let’s say I registered my trademark; I am going to be selling new collagen peptides. And so, my brand name or whatever on Amazon is going to be Collagen Peptides Health or something. You start with two SKUs. I mentioned that. But then let’s say, I am successful with these collagen peptides powder and now all of a sudden I am launching collagen peptides capsules or pills—brand new products. But I’m not having to go back to my trademark or something like that and add these new items to any registry or anything. Once I registered for my trademark, is it 100% done or what is it?

Anita Mar: Yeah, I wish. This is why it’s quite complicated. One of the biggest problems, it’s caught 22 for Amazon sellers. Most Amazon sellers, when they begin, they don’t know what they’re going to be selling in six months. And that’s normal. I mean that’s perfectly fine. Trademark law, however, doesn’t care about Amazon sellers or business owners in general. When you file your trademark, you list your items one, two, three. After you file, you can’t really add anything. You can’t modify the list of items. You can only delete. If you file your trademark for items one, two, three, and six months later you started selling item four that’s not in your application, there is no way you can add that item to the existing application.  You have to file a brand-new application. It can be a new application for the same trademark name, but for that additional item. That’s a problem.

Bradley Sutton: Why would that be necessary? Obviously, that’s the law, but I’m just curious because this is completely new to me. That doesn’t make any sense at all. Like if my brand is this or my trademark is this, and I don’t do what you just said, it doesn’t mean that I couldn’t use my brand with my other product. I mean, once I trademark a word, that’s it, right? Help me understand this because you’ve got me so confused right now.

Anita Mar: Yeah. Trademark registration is not necessary. You don’t have to file a trademark. It’s not necessary. It’s advisable because it makes enforcement of your legal rights easier. But it’s not necessary to trademark. I mean, for Amazon sellers it’s necessary because that’s the only way to get into the brand registry. When it comes to, let’s say you sell disposable paper plates, and you file a trademark for disposable paper plates and then you decide that you’re now going to be selling toys. So that’s a totally different product, right?  If you don’t file a trademark registration for toys, it’s possible that somebody else will be able to file a very similar trademark or even an identical one for toys. Because when it comes to confusion, when it comes to trademark registration, the trademark office looks at how similar trademarks are. They look at similarities between the actual trademarks and between the products. If the products are different, another company may be allowed to register a very similar or even identical trademark for different products. If you don’t register this additional product, somebody else may be able to do that. And then if you decide to stop those people, you will have to oppose or you will have to take them to court. To prevent that, it’s best to protect all your items by a trademark registration because that’s the cheapest way to do that. Trademark registration is the cheapest way to protect your products and to tell others that “hey, that’s my trademark.” Because most business owners, when they select a new brand, when they select a trademark, they check the trademarks office database. If they look for a trademark name for their toys product that you now sell but you didn’t trademark. So they check for toys and they say, “okay, there is no trademark for toys,” and it’s available and they file a trademark and the trademarks office obviously only looks at filed or registered trademarks, they don’t check and unregistered trademarks. The trademark’s office will allow this other person to register this trademark for toys.

Bradley Sutton: So, it can be the same exact trademark, but it would be allowed because the original one was based on a different product. And so that means somebody else can come in and do that same trademark for toys.

Anita Mar: Yeah. It’s possible. Depending on how unique your word is, somebody else may be allowed to register an identical or very similar trademark for different products.

Bradley Sutton: Wow, okay, that’s it. I knew I was going to learn a whole bunch of things. I had no idea about that. But let’s, I can just completely go off on a tangent. Now. You know, talking about trademarks in general because that just opened up a whole bunch of other questions, but I want to reel it back towards Amazon a little bit more. We talked about one of the benefits or just actually requirement for the brand registry, you have to have the trademark. But are there other benefits other than a brand registry of why it’s important for Amazon sellers to get a trademark?

Anita Mar: Yes, a trademark gives you federal rights. When you, for example, register your company name, it’s only valid in your state. Somebody can have an identical company name in another state. If you register federally and use PTO, you will have federal rights, and that’s important. You will have rights across the US. Another important thing is that a trademark is an asset. If you decide to sell your business, your Amazon business, and you decide to sell the assets, if you have a registered trademark, that will increase the value of your assets. And that’s very important. Another reason is that it’s easier and cheaper to enforce your rights. If you have a trademark that’s registered, your rights already presumed, you don’t have to prove them again because the trademarks office checked you. If somebody decides to use a similar trademark, it’s easier for you to stop those people, because they see that you have a registered trademark. It’s also easier to franchise and license your trademarks. So there are lots of lots of reasons, but yes, the main benefit is obviously brand registry, because Amazon doesn’t want to check who’s right and who’s wrong when it comes to trademark disputes. They left it up to the trademark office. So once your trademark is registered, and you are in the brand registry, Amazon will presume that you have valid rights and they will take your side.

Bradley Sutton: Interesting. Okay. And then after somebody has it, does a trademark symbol. Is that little TM that you put after a name?

Anita Mar: Yeah, actually there are two. TM means you use your brand as a trademark, as a source indicator. It can either be a registered trademark or unregistered, but R in a circle means it’s a registered trademark. You can only use R in a circle in the US if you have a registered trademark, but you can use TM at any time pretty much.

Bradley Sutton: Okay. What are the requirements? If somebody is listening to this podcast right now, they’re like, “wow, I didn’t know about this or I am interested in the brand registry. I definitely want to think about what I need to prepare.” What are some things that people need to have in order to even apply for it? What kind of ducks do they need to put in a row?

Anita Mar: You mean to apply for a trademark or for the brand registry?

Bradley Sutton: Yeah, applying for the trademark because I know it’s not just a simple process. Let me just take this step by step. I have very limited knowledge on this, but I do have some experience, so I just want to try and remember; this is something that happened five years ago. Don’t you have to give a reason of why you should be awarded the trademark? Like say, “Hey, this is my company” or “I was the first one to use this word” or something like that?

Anita Mar: Well you have to have a bona fide intention to use it. You should be pretty confident that this trademark is not taken by somebody else. For example, if you decide to register Microsoft, you cannot have good intentions because you know it’s already registered. That’s the only requirement. You have to intend to use the trademark as well. If you just file it to hold it, that’s not a good reason to file, and many people still do. But you have to have an intent, like a desire to use the trademark in the future. Or right now.

Bradley Sutton: Okay. And what would be some of the reasons? You have the intent, but then that still doesn’t guarantee you’re going to get the trademark, right? What could go wrong in the process?

Anita Mar: Yeah. Maybe I should mention, that the first thing you should do. You should do a trademark search because before you file, you should make sure that nobody else already filed, because if there is a similar trademark, then it’s possible that your trademark will be refused, especially if it’s filed for similar products. Not doing proper research, is a very, very, serious mistake that most Amazon sellers do. They find the name and they think, “oh, that’s a good name. It’s catchy, describes the product I’m going to file.” They file and then, four months later, they get a refusal and then they’re back to square one.

Bradley Sutton: Okay.

Anita Mar: Searching for the trademark is very important. But even before you search, you should actually come up with a name that’s unique. I mean, a very common mistake nowadays is that people are not very creative. Unfortunately, for example, if you sell vitamins or supplements that are like a very popular product. We see too many names that have words like green, wellness, herbal, canna, hemp—you know, those descriptive terms that have really bland and not very interesting. Like green wellness or herbal green, beautiful you. All those variations that lack a unique character.  They make it difficult to stand out from the crowd and to differentiate your product from others. So that’s one mistake. People don’t really think outside of the box anymore. They come up with a name that’s similar to some other name, and they like it and they decide to file for that trademark. They don’t add any unique descriptor or any unique word that makes the brand unique.

Anita Mar: That may be a problem because if it’s too similar to other trademarks, again, you risk getting a refusal from the trademark’s office. And another potential problem is that it makes it difficult for your customers to remember your brand because when they tried to remember what it’s like green wellness or wellness for you or wellness green or greenish. Or was it blue wellness? They forget the actual trailer because it’s so common. But people try to find a trademark that describes the products. They are too afraid to take the name that’s unique. I know we’ve been talking about this for about two minutes now, but that’s a serious problem.  

Bradley Sutton: No, I think is important to understand the common problems you see more than anybody else. You just mentioned a couple of the common mistakes or problems that people make. What are some others aside from choosing the wrong name or not doing a search to make sure that nobody else has it?

Anita Mar: Yeah, so another mistake is that people wait too long to file. They are afraid to file. They want to see how their sales are going to go; they wait for too long. And then, when the listing takes off, they have hijackers on their back. Then they decide, “oh, I need a trademark.” Now they file. But only to realize that it takes months to get a trademark. And until you have a registered trademark, you can’t get in the brand registry. Waiting for too long is another mistake because the longer you wait, obviously the more time it will take to get a trademark. You won’t be able to apply and get accepted into the brand registry unless you have a registered trademark.

Anita Mar: Another mistake that people make is filing for the wrong products, especially if you file yourself. Sometimes people file for their own products. They don’t really think about the description of the products, and they describe the products wrong and they attach wrong photographs. So that’s something you cannot fix actually. If you filed for, let’s say, you decide to sell disposable plates, so you file for disposable plates, but for some reason you also sell jewelry. So you attach a picture of jewelry with your trademark instead of disposable plates. So that’s something that may be quite difficult to fix later. Or you later realized that you should have filed for, you know, just regular plates, not disposable plates. So that’s something that you can’t really fix. If you filed for disposable plates, but then you decided to sell glass plates, you can’t really change that.

Anita Mar: Another mistake is that people file for too many products, especially beginner sellers.  They try to cover as many products as possible so they try to file for all possible products that they will sell in the next three years. And if you file in the US, most people don’t realize that before you get your trademark registration, you actually need to sell all of those products that you listed. It’s not enough to come up with the list. You actually need to sell all of them in the US before you get your final registration. And that can obviously delay the whole process. So instead of nine months in the US, you may be looking at two years because unless you sell all of the products, you can’t get your trademark registered. There some ways you can fix this, you can delete some of the products, you can divide the application, but you can’t get the eventual registration without selling everything that’s listed in your trademark application.

Bradley Sutton: So many things to say. It seems like such a complicated process.

Anita Mar: Yeah. I know.

Bradley Sutton: I definitely see why you can do this as a full-time living. If I were just to try to do this on my own, I would probably be the one making some of the mistakes here.

Anita Mar: Another thing I wanted to mention. Many Amazon sellers, they—I don’t know how often that happens—say, “oh, I don’t want my competitors to know that I’m filing for a trademark, so my sister is going to own this trademark or my brother or my mother.” So your mother now filed for the trademark, but you actually use it yourself. So that can be another problem. So, the trademark owner doesn’t actually intend to use the trademark. We’re filing in the wrong applicant’s name. So that’s another potential problem. if you file in the US and if you don’t sell your products yet, if you decide to transfer your trademark, you can’t do that until you start selling your products. So if you filed in the wrong applicant’s name, you can’t fix that until that initial applicant is making some sales. If you decided to switch the companies or transfer the trademark, it has to be used already.

Bradley Sutton: Wow. Yeah. Okay. I had never even thought about that, but that makes sense. When I search for trademarks it says who’s the registered owner. And a lot of people—since that’s public information—they might not want that to be shown.

Anita Mar: Yeah. Well, there is a solution. You just file in your LLC and your company name. In this case, your personal name will not be shown. If you haven’t incorporated yet, there is no way around that. If you don’t want your personal name to be shown, file in your company name.

Bradley Sutton: All right, that’s good advice. Any other advice that you give to sellers who maybe have not filed for a trademark yet or maybe they filed for a trademark, but they might have done one of these or maybe they’re not sure exactly how they did it. Like maybe they should review it or what some, just closing advice you can give some of our listeners here?

Anita Mar: Well, one of the things I had wanted to mention is if you are a beginner, if you’re just beginning, I know many Amazon sellers want to file in the US because if you sell in the US if you sell on amazon.com, that’s the trademark to have, and that’s understandable. unfortunately with the US process, because it takes so long, down the road, you may decide that you are going to change your product. With the US as you understand now, you can’t really get the eventual registration until you sell your products. So if you filed for product A, and now you sell for product B, you will not be able to get your trademark registered. If your desire is to get into the brand registry as soon as possible, a good solution is to file in another country that’s quicker. For example, the UK or Germany. We do file in the UK a lot and you will get the trademark in three and a half months, and this trademark will allow you to get into the brand registry. It will allow you to optimize your listing. It will give you enhanced brand content. So once your list gets optimized, you will not have many hijackers. And then, so let’s say in six months when you know what you’re going to sell when you found your niche product, then you can file in the US. Because we’ve seen this too many times that people file for their own products or they decide to add products, but they filed in the US, so now they’re stuck with a US trademark, and they have to actually use the trademark because unless they use it, they will not get registration and they will not be able to get into the brand registry. And that’s, that’s very important because the goal obviously is to be in the brand registry as soon as possible. Once you’re listing picks up and you have some sales, you will have hijackers. Without brand registry, you will not be able to do much. You will not be able to optimize your listing. You will not be able to get any help from Amazon. You will be losing quite a lot in sales. Having a trademark is essential. And if you haven’t decided on the products yet or if you think you may be changing the products down the road, file it in the UK, maybe at the beginning. And it’s also cheaper. It’s faster. In the UK, you don’t have to use your trademark unlike the US, so you don’t have to file any statement of use. There is no requirement to actually sell your products in the UK before your trademark registers. So that means you can file quite broadly, and still get your trademark registered. And another difference is that in the UK they don’t look at confusion. So unlike like the US, they left it up to the owners to decide whether a trademark is confusingly similar. In the US, the trademarks office can stop you and they can say, “oh, hey, this trademark cannot be registered. It’s too close to this other registered trademark.” if you persuaded the examiner, your trademark will be published for opposition purposes and then third parties may oppose the registration of your trademark. There are two steps in the US.  In the UK, there is just one. The trademarks office is not going to stop you. They’re going to publish your trademark for opposition purposes. And then if somebody decides that your trademark is too close to their trademark, they can oppose. So that’s why the whole process is much quicker and easier. And the success rate is much higher in the UK than in the US. That’s why it may be a bad idea for beginners—in addition to the US trademark—filing the UK, as well. if the budget only allows for one trademark, ask yourself a question: can you wait for nine months or longer before getting in the brand registry? If the answer is yes, we can file in the US; if the answer is no, I need to be in the brand registry like tomorrow or in three months, then you have to file in the UK.

Bradley Sutton: Interesting. Yeah, that’s something I have not considered about filing in another country. Thank you very much, Anita, for your time here.  I have more questions. I’m sure others have more questions. So how can they reach you or if they want to perhaps hire you to help them to register their trademark, how can they find you?

Anita Mar: Yeah, well, we have the seller trademarks website.

Bradley Sutton: sellertrademarks.com right?

Anita Mar: Yes. In sellertrademarks.com we’re going to be adding the UK soon so you will be able to buy a bundle. There will be more variation because right now we just have one trademark. The US, but we will be adding to the UK soon, so people will be able to have more choice.

Bradley Sutton: Excellent. All right. The website is up now. It’s sellertrademarks.com. Depending on when you guys are listening to this, you might see the option of the UK trademarks in the future, but it’s always going to have the one for the US there. I’m looking at the website now, and I haven’t seen it in a while, but there are a frequently asked questions here on the front page and then you guys can put in your information there and Anita will help you. So Anita, thank you again for this super valuable information. I think this is very important for anybody who’s interested or currently selling on Amazon to make sure that they know about why there is a need for this trademark and how to do it the right way.  I really appreciate you joining us and hopefully, we’ll have you back on in the future.