Intellectual Property for Online Businesses and Amazon Sellers

By Paul S. Rafelson, Founder, Rafelson Law PLLC

Which intellectual property matters do we handle?

• Trademarks and Brand Registry. Brand names and logos, Amazon Brand Registry and trademark disputes.
• Copyright. Product photos, listing copy and artwork, including DMCA notices and counter-notices.
• Patents and Amazon APEX. Patent claims on either side, including Amazon’s APEX evaluation.
• IP counseling. Ownership, licensing, contracts and deals.

Trademarks and Amazon Brand Registry

A trademark identifies your brand. Amazon Brand Registry is Amazon’s program for brand owners. In the U.S., you qualify with a registered trademark or a pending USPTO application. Amazon’s requirements change, so we check the current requirements for your brand and markets. See our Brand Registry overview and our pages on enrolling with a pending trademark.

• Clearance and registration. Searching for conflicts before you commit to a name, and registering the mark.
• Brand Registry. Enrolling the brand, including while your application is pending, and using Amazon’s brand tools.
• Enforcement. Notices to infringers, Amazon reports, and, where platform tools are not enough, court action.
• Defense. Responding when another brand or seller claims your listing infringes its trademark.

Copyright

Copyright covers original creative work, such as product photographs, A+ content, listing text and packaging artwork. It does not protect the shape of a useful product. A design patent or trade dress covers product appearance. A copyright holder can send a Digital Millennium Copyright Act (DMCA) takedown notice, and a person whose content was removed can send a counter-notice.

• Registration. Registering copyrights in the work that matters to your brand.
• Takedowns. DMCA notices against copied images and listing content.
• Counter-notices. Responding when your listing is removed after a copyright complaint.
• Enforcement. Escalating to court where a copier does not stop.

Patents and Amazon APEX

A patent dispute arrives as an Amazon notice, an APEX request, a demand letter or a lawsuit. Amazon Patent Evaluation Express (APEX) is Amazon’s program for claims a listing infringes a U.S. utility patent. A patent owner requests a neutral evaluation, and a named seller takes part, resolves the claim with the patent owner or takes the dispute to court. A seller who does not take part loses its listings. If the evaluator finds the patent owner is likely to prove infringement, Amazon removes the listings of every seller who took part. An APEX notice gives you the window stated in the notice and no more.

We handle patent disputes on both sides. If you are accused, we read the patent claims against your product, advise on your options and respond to Amazon or the patent owner, including negotiating a resolution. If you own the patent, we enforce it through APEX, other platform processes, demand letters and court action. Read our full page on patent disputes and Amazon APEX.

IP counseling

Many IP problems start with unclear ownership. We advise on:

• Who owns the brand, photographs and designs, including work done by agencies, freelancers and manufacturers.
• Licenses and contract terms with suppliers and brand partners.
• How to respond to an IP complaint before it affects your account. See our account suspension guide.
• IP in a deal. Buyers examine brand ownership; see our buying guide and selling guide.

What should I gather first?

• The notice or complaint, the ASINs involved and the response deadline.
• Your trademark, copyright or patent numbers, if any.
• Proof of when you created or first used the brand or work.
• Your agreements with designers, agencies and manufacturers.

How do I get started?

Contact us. Tell us the brand, the marketplace and what has happened, and we will tell you whether we can help.

Frequently asked questions

Related pages

Sources and notes

• Amazon, “Amazon Patent Evaluation Express (APEX) program”, Amazon staff announcement, Seller Forums.
• Amazon, Utility Patent Neutral Evaluation Procedure.
• Amazon Seller Central Help, Amazon Patent Evaluation Express (APEX) (sign-in required). Read the current Amazon agreement for the terms of a particular dispute.
• 17 U.S.C. § 101 (useful articles); Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. 405 (2017).