Seattle Trademark Lawyer

It’s always a treat when The New York Times tackles a trademark issue.

The latest is an interesting take on how the Amazon Marketplace has impacted trademark filings. USPTO filings have spiked in recent years simply because Amazon requires a trademark registration before enrolling a seller in its Brand Registry program. Amazon’s program is popular because it gives trademark owners additional tools to fight counterfeiters and control how their brands appear on Amazon’s platform.

In particular, Amazon has led to the rise of “pseudo-brands,” sometimes-temporary, often meaningless trademarks intended to help a seller set itself apart in the crowded Amazon Marketplace. Think FRETREE, MZOO and SPEXCEL. Sellers using pseudo-brands like these rely on user reviews (real or fake), search engine results, and the Amazon name to make sales more than the reputation embodied in their own brands. This strategy is especially popular with Chinese sellers of consumer goods who compete in a particular product market until it’s saturated, then move on to another. 

“The result is something like a trade war in miniature,” the article notes, “with corresponding Amazon-specific battles over intellectual property, counterfeit products, product pricing and business ethics.”

The writer opines that “Amazon’s peculiar relationship with trademarks is slowly but surely altering the greater brand atmosphere. I ordered my FRETREE gloves for this story, but I’ll wear them — they’re fine. There’s already an MZOO sleep mask in our bedroom, and SPEXCEL cycling gear in my closet.

“The recreational path that I take to work is a parade of athletic apparel — for years now, the flow of logos from Nike and Under Armour and Rapha and Lululemon has been speckled by runners in head-to-toe Baleaf and cyclists with loud jerseys branded SPONEED.”

The U.S. Patent and Trademark Office usually examines applications for trademark registration in the order in which they are received.

This means that even if you have priority of rights, your application will be denied if someone filed an application before you for which your trademark is likely to cause confusion — even if the prior filer only beat you by a few minutes or a few days. In such a case, you’d normally need to oppose the prior-filed application to block it (if the application is still pending) or petition to cancel the registration (if the registration has issued).

However, a narrow exception exists. If you are involved in actual or threatened infringement, pending litigation, or have a need to register your trademark in order to secure a foreign registration, for $100, you can petition to make your application “special.” If accepted, your application is given expedited treatment and leap-frogs prior filings.

An application for registration of a mark that was the subject of a previous registration that was inadvertently cancelled or expired will be made “special” upon request. No petition is required.  

Being on the verge of launching an advertising campaign, however, doesn’t cut it.

This little-known device can avoid the need for procedural acrobatics. Why wait for a prior-filed application to be published or go through the pain of opposing it if you don’t have to? The smart answer is that you shouldn’t — as long as you’re “special.”