Enrollment in Amazon Brand Registry gives brand owners access to tools that can help identify and address potentially infringing or counterfeit listings. For brands faced with unauthorized use of protected trademarks or trade dress (including packaging), several Amazon initiatives may be particularly useful:
- Project Zero: Combines automated protections with tools that allow qualifying brands to remove counterfeit listings directly, without first submitting reports for Amazon's review. Access to these tools is subject to Amazon's eligibility and participation requirements.
- Transparency Program: Uses unique product codes to authenticate individual units. These codes can help Amazon identify products that cannot be authenticated before they reach customers, providing brands with another layer of protection against counterfeit goods.
- Report a Violation (RAV) Tool: This tool allows rights owners and their representatives to report suspected intellectual property infringement involving Amazon listings. A well-supported complaint should identify the listings at issue and clearly explain the rights being asserted and the basis for the alleged infringement.
A Practical Approach to E-Commerce Trade Dress Enforcement
Amazon's reporting tools are only one part of an effective enforcement strategy. For trade dress claims in particular, brands should be prepared to document their rights and the conduct at issue before seeking removal of a competing or counterfeit listing.
1. Document Packaging and Other Distinctive Brand Elements
Maintain clear records of product packaging, distinctive color combinations, product configurations, and other visual elements that may contribute to the brand's trade dress. Dated design files, photographs, advertising materials, and sales records can also help establish when and how those features have been used in commerce.
2. Consider Test Purchases
When the nature of a suspected infringement is difficult to establish from an online listing alone, a test purchase can provide useful evidence. Brands should carefully document the purchase and the product received, including its packaging, labeling, appearance, and other relevant differences or similarities.
3. Escalate When Standard Reporting Is Not Enough
Not every intellectual property dispute fits neatly within an automated platform-reporting process. If an initial complaint is rejected or the conduct continues, counsel can assess whether additional evidence, a revised submission, direct correspondence, or other legal action is appropriate.
For trade dress claims, that analysis should focus on the particular rights involved and the facts supporting a likelihood of consumer confusion rather than relying solely on similarities between two product listings.
4. Watch for Repeat Activity
Removal of one listing may not resolve the broader problem. Sellers of suspected counterfeit or infringing products may appear through different listings or storefronts. Ongoing monitoring can help brands identify recurring issues and respond before infringing activity becomes more widespread.
Practical Guidance
Amazon provides brand owners with several potentially valuable enforcement tools, but platform remedies are most effective when they are supported by well-documented intellectual property rights and strong evidence of the alleged infringement.
Brands facing counterfeiting, trade dress infringement, or other unauthorized marketplace activity should consider both the strength of their underlying rights and the enforcement options available to address the specific conduct at issue.
For guidance on protecting and enforcing intellectual property rights in online marketplaces, drawing on insights highlighted in our contribution to the Legal 500 Country Comparative Guide on Intellectual Property, visit Bochner PLLC’s Intellectual Property practice group.
