Last week Amazon.com released its fourth annual Brand Protection Report, highlighting the company’s increased efforts to stop sales of counterfeit products and intellectual property violations. The Report announced that in 2023 alone, Amazon identified, seized, and disposed of more than 7 million counterfeit products worldwide and stopped more than 700,000 bad actor attempts to create new selling accounts. What does the latest Brand Protection Report say about the company’s enforcement of trademark rights? The short answer is that practically the entire report concerns trademark rights, and it also demonstrates the need for brand owners to retain experienced trademark counsel.
First, the Report highlights the importance of Amazon’s Brand Registry program, which allows brands to report violations such as counterfeit or unauthorized sales. Before enrolling in Brand Registry, a brand must have a registered trademark or Principal Register trademark application pending in the U.S. Patent and Trademark Office.
Second, the Report discusses Amazon’s Counterfeit Crimes Unit (“CCU”), which in recent years has worked with major brands like BMW, YETI, and Canon to file joint civil lawsuits and make criminal referrals against large-scale counterfeiters – more than 21,000 to be exact. Counterfeiting is a violation of trademark rights for which courts can award the defendant’s profits, treble damages, or statutory damages between $1,000 and $200,000 per counterfeit mark and up to $2,000,000 if use of the counterfeit mark was willful. 15 U.S.C. §§ 1114, 1117(b), (c). The aim of the Lanham Act’s counterfeiting provision is to “prohibit the use of a trademark on an unauthorized product, not merely to prohibit literal counterfeiting through reproductions or imitations that deceive customers about the source of a product.” Chicago Mercantile Exch. Inc. v. ICE Clear US, Inc., 18 C 1376, 2020 WL 1905760, at *20 (N.D. Ill. Apr. 17, 2020) (citing Gen. Elec. Co. v. Speicher, 877 F.2d 531, 534 (7th Cir. 1989)).
While Amazon has certainly stepped up its brand protection efforts in recent years, both brands and Amazon sellers of brand name products should still rely on their own experienced trademark attorney for two key reasons. For one, to even take advantage of Brand Registry and CCU, a company must have a validly registered or applied-for trademark. A trademark attorney who can navigate the complicated and lengthy trademark application process is crucial for brand development. Secondly, while CCU certainly is an excellent resource for major brands who experience counterfeiting problems, the CCU team may not be able to act on behalf of smaller brands who could still face significant business and reputational losses due to trademark infringement and counterfeiting issues. Experienced trademark counsel will protect your trademark through vigorous enforcement in the form of cease-and-desist letters and T.T.A.B. and federal court litigation.
To learn more about how experienced trademark counsel can assist brands and e-commerce sellers, please visit Chilivis Grubman’s Trademark, Copyright, and Brand Protection practice page.