Trademark Law Alert—Walmart and Amazon Infringement Tools - Lexology

Summary

Third-party online marketplaces, such as those run by Walmart and Amazon, can be effective and lucrative spaces for brand owners to reach many consumers, which also make them an attractive target for counterfeiters and infringers, who often attempt to take advantage of the goodwill and consumer recognition of popular brands.

Perhaps you have recently designed the world’s greatest widget or this year’s most requested holiday gift. You are selling your goods online and sales are going swimmingly. Suddenly you receive complaints from customers who are not in your sales database, who claim that they purchased defective goods bearing your mark.

Third-party online marketplaces, such as those run by Walmart and Amazon, can be effective and lucrative spaces for brand owners to reach many consumers, which also make them an attractive target for counterfeiters and infringers, who often attempt to take advantage of the goodwill and consumer recognition of popular brands.

Perhaps you have recently designed the world’s greatest widget or this year’s most requested holiday gift. You are selling your goods online and sales are going swimmingly. Suddenly you receive complaints from customers who are not in your sales database, who claim that they purchased defective goods bearing your mark.

When you ask to see a photo of the product, you are horrified to discover that an unknown third party has created an inferior good that looks highly similar to yours and which bears your mark. Outraged, you search online and discover that the knockoff goods are being sold by a counterfeiter through a popular online marketplace. You send a cease-and-desist letter to the counterfeiter, who never responds. Do you have any recourse with the third-party marketplace?

If you find that third parties are infringing your marks or selling counterfeit goods via Walmart Marketplace—Walmart’s online third-party seller platform—you may wish to use an intellectual property infringement reporting tool that Walmart offers: the Brand Portal.

The Walmart Brand Portal allows brand owners to submit reports of trademark, copyright, and patent infringement and counterfeit goods using a streamlined tool that autofills certain information that would otherwise need to be typed and re-typed with each separate report filed against an infringer.

Brand Portal users can also manage the status of their various claims through the Portal rather than relying solely on email updates, which is especially convenient for brand owners who are monitoring multiple claims at a time and may already have an overburdened email inbox. Once registered with the Brand Portal, a brand owner can grant its counsel access to the Portal, so that its attorney may submit intellectual property claims on the brand owner’s behalf.

The Amazon Brand Registry is another helpful tool that brand owners can use to enforce their brands on the Amazon platform and report infringing/counterfeit goods. In order to join the Brand Registry, brand owners need to provide proof of a trademark registration for the brand for which they are seeking protection. If brand owners apply for a trademark registration through the Amazon IP Accelerator, they can obtain access to the Brand Registry even before their application formally registers.

As many brand owners know, tackling intellectual property infringement online does not involve a one-size-fits all approach. Sometimes brand owners need to send demands to infringers, sometimes to third parties, sometimes via email, sometimes via letter, and sometimes via online form. The Walmart Brand Portal and Amazon Brand Registry are two efficient tools for brand owners to employ against infringers on Walmart and Amazon’s third-party seller platforms.