October 20, 2023 • 39 mins
Have you ever wondered why a trademark is your golden ticket to success on Amazon and how to effectively navigate the Accelerator program for early access to the Amazon Brand Registry? Janet Moreira, our guest from Caldera Law, joined us in this Planet Amazon podcast to answer these questions, explain the legal protection a trademark offers, and advise on avoiding brand name conflicts.
We also tackled the tricky subject of registering a trademark outside the United States. International sellers, listen up! It's vital to register your trademarks in all countries you operate in for maximum brand protection.
Janet talked about the myriad of tools Amazon provides to safeguard your brand, the right course of action if another seller uses your trademark, and how to report a violation to Amazon's Brand Registry team.
Finally, we discussed the rules surrounding trademark usage on products and packaging and the risks of using descriptive marks. And don't fret if you're wondering how to select an IP Accelerator firm or navigate through filing a trademark.
Tune in and arm yourself with the knowledge to protect your brand and thrive on Amazon.
To learn more about Caldera Law https://www.caldera.law/
Want to chat with us about this podcast? Send us a text message here
The Planet Amazon podcast, brought to you by Phelps United, addresses all things Amazon and other eCommerce marketplaces. In each episode, we talk with Brands, Agencies, and Sellers about Amazon news, new features, policies, brand policies, logistics, marketing, issues, and challenges, among other topics.
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Episode Transcript
Available transcripts are automatically generated. Complete accuracy is not guaranteed.
Speaker 1 (00:00):
Welcome to the Planet Amazon podcast with Adam
Shaffer, where we explore theworld of Amazon and other
e-commerce marketplaces.
Join us as we delve into thelatest strategies and tactics
for successful selling on theworld's largest online
marketplace.
Hello everybody.
Adam Shaffer (00:19):
I'm Adam Shaffer and welcome to Planet Amazon,
where we talk about all thingsAmazon, and today we're going to
talk about a really importanttopic.
In fact, it's almost impossibleto be successful on Amazon if
you're a seller on Amazon or abrand on Amazon without having
brand registry, and so it soundssimple, but there's definitely
(00:41):
some steps you need to take, andthe most important step is you
have to actually have a brandand a trademark, or Amazon will
not allow you to create a brandregistry account, which gives
you a whole bunch of benefitswhich we'll talk about, and to
help me explain the importanceof a trademark and how to get a
trademark and how Amazon goesabout all this is our special
(01:03):
guest today Janet Moreira fromCaldera Law.
Thank you for joining us today,janet.
We really appreciate you beinghere.
Janet Moreira (01:13):
Well, thank you for having me.
I look forward to talking aboutthis.
Adam Shaffer (01:17):
So you taught me about trademarks because we were
trying to figure out how to geta brand registry account going
and the first thing we found weneeded was a trademark.
And we went, tried to do itourselves and it was very
complicated and we were noviceswe're not in the trademark
(01:37):
business and we really struggledtrying to figure out how to do
it ourselves although I knowpeople do it.
And then the waiting game ofwaiting to get the brand
registry account set up.
And then we learned about aprogram that Amazon has called
IP Accelerator, and we met youthrough there.
So can you explain what IPAccelerator is?
(01:59):
And then we could get into thefun part of talking about
trademarks.
Janet Moreira (02:03):
Sure, well, again , thank you for having me today.
I look forward to talking aboutthis.
This is something I'm verypassionate about, and I've been
part of the Amazon IPAccelerator program since its
inception in 2019.
So Amazon IP Accelerator isbasically a program benefit for
(02:24):
Amazon sellers, and so Amazon'sIP Accelerator consists of
Amazon's vetted law firms, whoare trusted experts who can help
businesses establish their IPprotection in the United States
and expand their brand'sfootprint in the Amazon
marketplace.
So we are a law firm and we arean exclusive provider of legal
(02:48):
services.
If you use one of the vettedlaw firms in the Amazon IP
Accelerator program, then youwill have early access to Amazon
brand registry, which isanother program for Amazon
sellers.
Adam Shaffer (03:02):
Yeah, I mean, and so that's what we learned by
doing it ourselves We'd have todo the waiting game, and I think
that's still pretty accuratewhere you have to wait.
It could take six months to ayear to get a use of the
trademark, and that's if you aresuccessful.
But with an IP Acceleratorpartner like your company, it
(03:24):
was like a couple of weeks.
Janet Moreira (03:25):
Yeah, yeah.
So the primary benefit of IPAccelerator is that you have
early access to Amazon brandregistry.
So Amazon brand registry is aprogram for Amazon sellers with
registered brands right Now.
The USPTO, the United StatesPatent and Trademark Office,
(03:46):
takes a very long time thesedays to look at trademark
applications due to the influxof trademark applications being
filed.
So when you file an application, it could be 10 to 12 months
before your application islooked at, which means the
registration process is evenlonger than that.
So Amazon reacted to that andinitiated the IP Accelerator
(04:09):
program, giving sellers theability to gain early access to
brand registry, not having towait until the brand is
registered, but only wait untilthe application has been filed,
so long as you are using one ofthese vetted law firms.
Adam Shaffer (04:26):
So I hope that answered your question.
It does, and what we learnedalso is that, again, if you
don't do it right, using thisAccelerator is great because you
can get your brand registry setup you still have to go through
all the motions of securingyour trademark until it becomes
(04:46):
officially your registeredtrademark, or Amazon could kick
you off the brand registry.
Is that what happens?
Janet Moreira (04:52):
Yeah, absolutely.
I mean, again, keep in mindthat Amazon brand registry is
for registered brands.
So, while you can gain earlyaccess to brand registry through
IP Accelerator think of it assort of a probationary period
you ultimately have to get atrademark registration in order
(05:12):
to stay in brand registry.
So you do want to work with.
I mean, while the trademarkapplication is a pretty
straightforward process, it isone that is a legal process,
right?
And so when you're dealing witha legal process, it is
important to have someone guideyou through that process,
(05:34):
because the trademarkapplication has long-term and
legal consequences and should becarefully prepared by someone
who understands those things.
Adam Shaffer (05:43):
Yeah, for sure, and we definitely ran into some
areas.
I think the first trademark wedid with you there was
definitely you found someconflicts and we were, with your
help, able to get through theconflicts and be able to keep
the brand name that we wanted.
So it's not, like I said,straightforward.
If we did it ourselves, I mean,I think we would have gone down
(06:07):
a path, spent a lot of time andmoney on it and then we would
have had a kind of create awhole brand new brand name again
.
So thank you for that.
But so now, taking it back justa little bit, and then we'll
talk more about brand registry.
For those that don't understandand I know you definitely do
what's the trademark?
What do you need one?
What is it for?
Janet Moreira (06:29):
Well, that's a very loaded question, so let's
start with the basics.
So a trademark is a symbol, aword or phrase that
distinguishes your company'sproducts or services from other
companies.
Everything that you buy in astore has a brand associated
with it.
It is a.
It can provide legal protectionto the owner of the trademark
(06:49):
to have exclusive rights to usethat trademark in commerce and
to prevent others from using itwithout their permission.
Brands are important forbusinesses because they help
establish brand identity andreputation by creating this
association between thetrademark and the quality of
products or services.
Trademarks are greatcommunication tools, right?
(07:10):
They immediately tell acustomer about your, about your
brand, about the quality of yourproducts and services, and a
strong trademark basicallycreates consumer trust by
ensuring that the trademark isalways associated with that same
level of quality for theproducts and services.
Adam Shaffer (07:28):
And and trademark it could be.
You said words, but it could bea picture too.
Janet Moreira (07:32):
I could be a part , a picture, it can be a sound.
If you think about Yahoo, ifyou think about the peacock and
the chime for NBC, there's ancolors, it's, it's anything that
acts as a source identifier,and it can be a combination of
those things as well.
Adam Shaffer (07:49):
I didn't realize you could trademark a sound.
Yeah, okay, so like the NBC Don, like, like that chime is, yes,
actually more Okay, I didn'trealize, cool, I had to come up
with a sound, so cool, so then.
So then, if you do have thetrademark Whether it's with
Amazon on brand registry or not,on Amazon, and somebody says,
(08:13):
hey, I like that brand name, Iwant to use that brand name, how
does it work?
How do you protect yourself?
Janet Moreira (08:20):
Okay, so a trademark protects you.
I let me talk about a littlebit about what a trademark
Protects against, right?
So a trademark covers you forthe, the trademark that you
filed.
So whether it's a logo, whetherit's words, whether it's words
plus design in Combination withthe goods and services that
(08:43):
you've listed in yourapplication, right.
And then it protects you forthose things on a nationwide
level upon registration, right.
So it gives you very broadprotection across the United
States Against confusinglysimilar marks.
So the standard for whether aparticular use conflicts with an
existing trademark is notwhether the two marks are
(09:05):
identical.
That is a large misconception.
I'm good, most people right.
It protects you against marksthat are similar to yours.
So it gives you a much broaderlevel of protection Then one
typically thinks of when theythink about a trademark.
It protects it for the productsand against confusingly similar
marks.
Adam Shaffer (09:25):
So so that's helpful.
I didn't.
I didn't realize that.
And when you get a brand ortrademark and you're based in
the US and you're selling in theUS, you're setting it up with
the US patent and trademarkoffice, the US PTO, right, what
happens if you want to sell inCanada or in Europe somewhere?
(09:46):
You have to do it again.
Janet Moreira (09:47):
Yeah, and rights are territorial, so every
country has trademark laws,right?
So when you want to, aTrademark in another country
does not protect you in the USand a trademark in the US does
not protect you in othercountries, right?
So international sellers canregister a trademark wherever it
(10:09):
is that they are selling theirproducts and services, and
trademark rights are granted bythe individual country
Registries trademark registriesbased on that country's specific
trademark laws.
So when a company registers atrademark in a particular
country, those rights arelimited to that country's
borders, right?
(10:30):
So while a particular sellermay have rights in a particular
country, maybe their homecountry that does not
automatically extend to theUnited States and vice versa US
sellers that have a US trademarkdoes not mean that they have
rights outside the US.
Adam Shaffer (10:45):
Wow, so you really got to focus.
If you're going to startselling in other countries, your
brand might already be beingused out there for all you know.
You don't know withoutsearching, or somebody could
also see what you're doing inthe US and try to use that brand
in a different country.
Janet Moreira (11:00):
Absolutely, it happens all the time.
Adam Shaffer (11:02):
Oh man, that would bum me out for sure.
Cool.
So now I guess the big questionis you know why brand registry?
So, you know, I think I wouldwant to trade more.
So I want to protect my brandand I want to, you know, have
this unique brand to Tell people, learn about my products and
understand it's a trusted source, and blah, blah blah.
(11:23):
But I think that so many of thesellers on Amazon want it
because a they want that, butthey also Need the benefits of
Amazon's help to protect theirbrand.
So once you get brand registry,it opens up a whole, you know,
set of tools that Amazon givesyou.
So if you don't have your brandRegistered with Amazon, which
(11:46):
means you have to have atrademark- or you cannot get
brand registry, so it's like thechicken and the egg, but you
got to have that, that trademark, first.
Once you have brand registry, itunlocks a plus content so you
could tell a much better storyabout your brand on Amazon for
sure, and those that don't havea plus content really, really
(12:07):
suffer because it just You'llhave competitors that do have a
plus content tell a much betterstory about their brand and
their products and it'll giveyou a much lower conversion
without it.
And and you really do want totell the story, because one
thing you want is to explain tocustomers why they want your
product, how it sells, theirproblems, and you also don't
(12:27):
want returns from people saying,oh, let me try that if you
could tell the right story,that'll hopefully prevent some
returns and keep people happy.
Also, you got to have atrademark, to have brand
registry, so you can have abrand store or, you know, seller
store.
So without that, if you want toagain tell a better story about
your brand and differentiateyourselves, you need to have
(12:50):
Brand registry.
So you have to have a trademark.
If you want to do vine, whichis a reviews program that Amazon
has, and in fact, if you have abrand registry account.
They'll give you one freebieWith 30 reviews.
But to get your productsreviewed on Amazon most in role
in their vine program, withouthaving a trademark and brand
registry you can't have vine.
(13:11):
If you want to report aviolation where somebody is
encroaching on your brand onAmazon, without having a legal
trademark and brand registry,they won't even accept the case.
So you need to have thetrademark, to be able to have
the brand registry, to be ableto protect your brand and Be
able to put cases in aboutpeople violating, maybe
(13:33):
counterfeiting or doing whateverthey're doing.
And also it gives you somebodyto talk to at Amazon there's a
brand registry support team thatis usually quite helpful to
help you solve some of theseproblems.
Also, if you want to do certaintypes of advertising on Amazon,
you have to have a trademark,to have a brand registry, to be
(13:54):
able to do brand Advertising andvideo advertising.
So again, it all goes back tohow do I start?
I want all these great features.
I want to protect my content.
I don't want folks changing thecontent I'm.
I want help getting bad peoplethat are abusing my trademark
and my brand off of Amazon.
You got to have that trademark,so I mean it.
(14:17):
It all starts there, and sowhat are, what are some cases?
Have you ever been involvedwith sellers on Amazon that say,
hey, janet, I got the trademark, it's great, but some other
people are using it like give ussome of the, the, the stories
that you've seen.
Janet Moreira (14:34):
Yeah, I mean I have clients who utilize the
takedown provisions On Amazonwith with their registered
brands, when they see productsthat are utilizing their
trademark.
I mean there's two different.
There's really two differenttypes of Sort of unauthorized
uses that really come into playon Amazon.
I would say the first iscounterfeiting, and what
(14:58):
counterfeiting is is essentiallythe Is knockoffs, right, so
pretending to be a brand thatyou're not.
It is the manufacturing or theselling of items that look like
a Genuine item but they are notthe genuine item.
So they are using someoneelse's brand to sell inferior
(15:19):
products, right, and using thatbrand to attempt to pass off
fake products as real products.
That's counterfeiting, okay.
The easiest way to think aboutcounterfeiting, I think, for me
is fake purses, right, which isan entire industry.
In an everyday life, it'spretending to be a Chanel bag
when it's really not a Chanelbag.
Another method of unauthorizeduses are the selling of products
(15:44):
using trademarks that are veryclose Remember I use the
language confusingly similarusing trademarks that are very
close to your trademark, right?
So trademark infringement isselling similar products to the
products that you're selling,not necessarily with your exact
brand name, but using a brandname that is so close to your
(16:05):
brand name, that it's causingconfusion in the marketplace,
right?
So when it comes to enforcingagainst these things on Amazon,
amazon is not going to payattention and you're not going
to have these tools available toyou unless you have a
registered trademark.
And the only way you get aregistered trademark is if you
actually file for one right.
And the way to get thesebenefits early is by utilizing
(16:28):
IP accelerator program.
So, yes, we utilize Amazon'stools frequently for our clients
that have registered trademarks.
Adam Shaffer (16:38):
Do you ever help them on Amazon, or do you just
advise them?
How does that work?
We haven't tortured you forthat yet.
Janet Moreira (16:45):
Yeah, I mean I am not an Amazon platform expert.
I would consider myself someonewho knows a lot about
trademarks.
I do have some knowledge ofutilizing some of the systems,
including brand registry, andhow to enroll the brand and
navigate that system, whichactually can be quite complex,
(17:06):
to even enroll your brand inbrand registry.
So I do assist with that and Iobviously have knowledge of the
tools to report infringements onAmazon so that I do utilize.
Adam Shaffer (17:21):
What about writing the case?
Would you write it or you justtell them what to do?
Okay, so that's something,because sometimes writing it the
way Amazon wants to hear it isreally important.
Janet Moreira (17:29):
Absolutely.
Yeah, of course, we know how toutilize the tools, and, being
that, I have the trademarkbackground.
Amazon is one platform where weenforce clients' trademark
rights, but it's not the onlyplatform, and so, in any arena
where we're doing that, we haveto create the story and provide
(17:50):
the information that the arbiteror the person making the
decision on the case is going toneed to hear in order to move
the case forward.
So, yes, we are able to do that.
Adam Shaffer (18:01):
And one thing you taught me also was that
trademark is kind of specific tocategory right, the product
category.
So can there be the same brandname but somebody selling
computer equipment and somebodyselling clothing?
Janet Moreira (18:19):
Yes, there can be .
There is a world where that canexist.
Now, not if it's Apple, becausethat's a famous trademark right
, but there can be identicalmarks on very different goods
and services absolutely so.
Adam Shaffer (18:34):
when you register the trademark, you need to be
pretty specific about what typesof products that you put us
through for sure.
Janet Moreira (18:41):
Yeah, the USPTO requires specificity there.
It is one of the requirementsof the trademark application.
So you cannot file in a generalclass oh, I want class 25.
You can't do that.
You can't have broaddescriptions of goods and
services.
If you file something with avery overly broad description,
(19:04):
the USPTO is going to rejectthat application.
So the description of goods andservices has to be sufficiently
specific and that is anotherreason why hiring counsel is so
important, because theyunderstand the intricacies of
that and most people who are notdoing this on a daily basis or
(19:26):
have an expertise in this areadon't understand those little
technical nuances that haveconsequences and are very
important to the trademarkprocess.
Adam Shaffer (19:37):
Yeah, I mean, one thing we ran into was we had
products in our minds that wewanted to create but they're not
available yet and you kind ofnavigated us like you could
actually get a trademark for aproduct that doesn't exist yet,
but then you need to do work tomake sure that you could keep
your trademark.
So can you explain more aboutthat, because that was a lot of
(20:00):
running around on our part toget sorted out.
Janet Moreira (20:03):
Well, I mean, that is really the difference
between filing a use-basedapplication or an intent to use
application.
So with a use-based application, the only goods that you can
identify in your application aregoods that you are using the
trademark on and or have sold.
So that is very specific right.
(20:24):
But most sellers that I'veencountered not only are maybe
selling products currently, buthave an idea of what they want
to sell in the future.
Right and when there areproducts that you have not sold
with the trademark yet, you wantto include those on an intent
to use application.
Now there is a balancing act tothat.
What you want to sell 10 yearsfrom now might not be
(20:48):
appropriate to include in atrademark application that
you're filing right now.
There are strategicconsiderations to being specific
, to having a timeline for thegoods and services to be sold
and not necessarily filing anapplication for the pie in the
sky goods and services that youmight want to file or might want
(21:08):
to sell five, 10 years from now.
Adam Shaffer (21:12):
Yeah, and it can't just be a picture, right?
You need to actually have aproduct with the logo on it or
the packaging.
How does that?
What's the rules with that?
You know it can't be, avaporware.
Janet Moreira (21:24):
Yeah, with regard to ultimately making use of
your trademark on your products,the trademark has to appear on
the product or it has to appearon the packaging for the product
, and it has to be exactly asyou've applied for it.
You cannot make changes.
So if you have a logo that youlove at the time that you file
(21:48):
your application, and then threemonths later, when you go to
file, you know, to design yourpackaging, you change the logo.
Well, now it's different, right, and that might require the
filing of an entirely newapplication.
So at the time of filing, youwant to make sure that whatever
you are filing is the one thatyou're going to be using, and
then, when you actually make useof it, you want to make sure
(22:11):
that it's permanently affixed toyour products.
So permanently affixed meansthat it's not a sticker.
You know that it's printed onthe packaging, that it's
embossed on your product, thatit's attached to a hang tag
that's attached to your product.
So we help clients navigate,developing specimens, making
(22:34):
sure that marketing materialscorrectly use the trademarks.
There's a number of things thatwe can do to assist our clients
with ensuring that the usesthat they're making are
compliant with trademark law.
Adam Shaffer (22:51):
Yep, and you know, one area that you kind of
helped us with also is likewe'll fall in love with the
brand name that we want to useand you'll say, I don't know if
you want to try to use that.
And we'll say, oh, come on,Janet, like we love this name.
What are we going to do?
And your advice would be what?
Well, somebody might be usingit.
(23:14):
You do it, yeah it depends.
Janet Moreira (23:16):
It depends on that specific trademark.
There are so many things thatgo into it.
I mean, a lot of people lovedescriptive marks.
They love to tell customersimmediately what they're selling
.
You know I'm selling kitchenspatulas so I want to call my
trademark the best kitchenspatulas ever.
You know, whatever it is peoplelike to describe their products
(23:38):
, those make the worsttrademarks right, because not
only are you, do you want todescribe it that way, but so
does every one of yourcompetitors.
So you know, descriptive markstend to have risk associated
with it.
That, you know, is I.
With any business that'sstarting out, I like to navigate
(23:59):
them away from things that arerisky things that are going to
be costly, things that are goingto be problematic down the line
.
I mean, when you're starting abrand, you should be starting a
brand that's going to carry someweight, that's going to be able
to develop goodwill, that'sgoing to be different than your
competition.
So I try to guide my clientswith keeping that in mind.
Adam Shaffer (24:22):
Plus, in our case, we'd be investing in packaging
and in advertising and trying tobuild the brand.
And then you might come back afew months later and say, hey
guys, we got a problem here.
So what would happen?
You get notified by the USP,uspto, that, hey, this is a
problem, yeah, or a company.
Janet Moreira (24:43):
How does it work?
Does the?
Adam Shaffer (24:44):
USPTO come to you or does a company come to you?
Janet Moreira (24:46):
Either one or both.
Adam Shaffer (24:48):
Really Either one or both.
Janet Moreira (24:50):
So the USPTO, when they take a look at
trademark applications, they'regoing to look at trademark
applications or registrationsthat are filed with the USPTO.
The USPTO is not going to lookat the marketplace to determine
whether or not there is aconflict Right, because we're
talking about now conflictsbetween one mark that's been
filed versus another mark that'sbeen used before or filed
(25:14):
before, right?
So as far as the USPTO isconcerned, they're going to look
at their own database andextract those trademarks that
are similar to yours, right?
That's one potential issue, andif the USPTO finds a trademark
that is similar to yours, thenthey're going to notify you
through what's called an officeaction, which is another way to
(25:36):
say a refusal, and they'll letyou know why it's been refused
and then you have theopportunity to respond, right?
So that's one issue that couldcome up if you're using a mark
that's similar to somebodyelse's mark.
Another issue that could comeup is that the owner of that
trademark right has an issuewith you and your application,
and they have an opportunity tooppose your application through
(25:58):
the USPTO.
They have an opportunity tofile a lawsuit against your,
against your company, and that'strue regardless of whether or
not they have a trademarkregistration.
So there are.
There are rights in the US thatcome from use that are common
law rights.
So, even if someone has neverregistered a trademark, they
have the opportunity to file alawsuit.
(26:20):
Now I say that right, there arerights that come from use in
the United States.
So even if you've never filed atrademark application, you can
have trademark rights.
Now, when it comes to Amazon,common law rights don't win the
day.
You don't get Amazon brandregistry with common law rights.
Adam Shaffer (26:43):
You have to have a piece of it you get.
Janet Moreira (26:44):
Amazon brand registry with a registered
trademark?
Right, so there's a difference.
It has different implications,different considerations.
But when that occurs, when theUSPTO issues an office action,
then you have the opportunity torespond.
But it's not an inexpensiveprocess at that point, right.
(27:07):
So it becomes expensive becauseyou have to write a legal
memorandum.
You have to have it withsupporting evidence and case law
and exhibits to make yourargument against the US
government as to why they shouldchange their mind.
That's not always an easy task.
Now, that's if the USPTOobjects right.
If somebody else objects toyour trademark application,
(27:30):
whether it's through the USPTOor whether it's through the
filing of a lawsuit, that's alsoan expensive endeavor, right?
So at that point, a lot oftimes people just abandon their
trademark right, I'm sorry, goahead.
Adam Shaffer (27:47):
What was funny is that I used to think companies,
they don't look at this stufflike they have their thing.
They're going through theirlives and they're going, and we
put a trademark in for somethingthat has nothing to do with
what they do, but yet somehowthey know.
So how do they know?
Janet Moreira (28:04):
Well, a lot of companies, a lot of brand owners
, right, they utilizesubscription services where
those subscription services willpull and and extract any
trademark application or filingsometimes around the world,
depending on the nature of thesubscription that you have of
trademark applications that arepotentially conflicting with
(28:27):
your mark.
So large brand owners, right,will have these watch services
in place so they're watching themarketplace to protect their
brand and make sure that theyenforce their brand against
potentially conflicting marks.
Adam Shaffer (28:42):
Yeah and so, and so that's something again,
because we were, hey, janet, wewant to use this brand and
you're like I don't know, likemaybe you shouldn't.
We went through anyway, we werein this electronics category
that we were trying to do, andthen somebody was doing this
watching, and they came to usand they said, hey, you know you
can't really use that brand andit's soft, but you helped us.
(29:05):
I mean, we had to go through acouple of steps, but you help
negotiate something with them sowe could still use the brand.
Janet Moreira (29:12):
Yeah, I mean, sometimes it's a matter of
negotiating some sort ofcoexistence agreement, but again
, this is the type of thing thatdoes require the assistance of
counsel to help.
Adam Shaffer (29:24):
We would have been dead with that.
We would have abandoned becausewe would have never thought we
could go up against this largecompany and you're, you believe
maybe they'll carve somethingout for us and let us, you know,
exist.
So that was, that was good.
But I guess the big the moralof the story is you should work
(29:49):
with a company like yours orfirm like yours to try to figure
out your best chance of successup front so you don't have to
go through all this stuffbecause we've gone through some
of this stuff.
And if we would have just spentthe time with you to say, hey,
you know, let us do some diggingaround first before you file,
(30:10):
that would have been time wellspent, I think.
Janet Moreira (30:13):
I mean I couldn't agree with you more.
I think you know the process,like I said, is straightforward,
but there are a lot of nuances.
You know it is a legal processand with any legal process there
are unforeseen things that comeup that only a council can
(30:33):
navigate and there are strategicconsiderations that doing so
and considering these things atthe beginning of the process may
alleviate some of the potentialcomplications later on.
So obviously I am a hugeproponent of utilizing council
in this instance.
I mean, if I you know, I lovethis process.
(30:58):
I really enjoy helping sellersand brand owners navigate this
process and finding creativesolutions to get you the
trademark that you want, by alsobeing reasonable and doing
diligence and research inadvance of committing fully to a
trademark.
Adam Shaffer (31:18):
I mean awesome.
So how do people access IPAccelerator?
How does it work with Amazon?
Janet Moreira (31:27):
Well, ip Accelerator is actually you know
, it is a free program right,you have to have an Amazon
seller account, so that is oneof the things that you do need,
but really it's.
Ip Accelerator is a tool thatis found on the Amazon seller
platform and, as long as youhave an Amazon seller account,
(31:50):
you can find us throughexploring some of the services
that Amazon offers.
Adam Shaffer (31:56):
And we found you through their IP Accelerator,
right.
So why did we go with you?
Well, you had the coolest dad,but it was because you were you
know what it was, I don't knowwhy because you were local to us
and we felt, oh, that's cool,we'll pick somebody local.
But it doesn't have to be thatway.
I mean, you don't need to benext door to somebody to work
with them.
So you know, I think you knowyou go through there and they're
(32:19):
probably all pretty good,although your firm is probably
the best.
Janet Moreira (32:23):
I have to say that all of them are really
great firms.
I mean, we are.
We are colleagues more so thanwe are competitors.
So the fact that they're inthis program means that they
have gone through a vettingprocess, it means that they know
what they're doing and,ultimately, I think, when you
choose council, you have to picksomeone that you're comfortable
(32:46):
with.
Right, this is a long termprocess.
This is not filing, and thenwe're never going to talk to
each other again.
Right, we want to be astrategic partner in the
development of your business.
Your business, hopefully, isgoing to grow beyond one brand.
It's going to grow beyond oneproduct.
Right, so we want to be therealong with you for this ride
(33:09):
that is entrepreneurship.
Right, and selecting council isa personal decision.
Any one of these IP acceleratorfirms, from a business
standpoint, is going to be ableto help you navigate this
process.
So then it's beyond that, towho is wants to be there for the
ride?
Right, and you know, hopefullythat's that's me.
Adam Shaffer (33:30):
Well, I mean, we, we work with you once and we've
been back several times withmultiple brands.
So I think once you find theright match, you continue on
with them, because it'sdefinitely if you're an
entrepreneur, it's never onebrand.
I don't.
I don't think it's possible.
So I think it continues on.
And again, it's important forAmazon because you need those
tools if you want to besuccessful, but you need the
(33:51):
trademark anyway.
So I know it sounds like, hey,it's a boring story, but we were
just at Amazon Accelerate inSeattle and there was a breakout
on trademarks, ip acceleratorand brand registry and it was
probably the busiest sessionthey've had, where people were
sitting around and they theydidn't really like you sitting
around the wall, but they madeyou stand up, but but it was
(34:11):
really well trafficked and somany people have questions about
trademarks and how do I get atrademark and do I need it in
all the countries, and so Ithink you know, just spending
time with you and understandingit would help, because that was
a really short session and Ithink there's still a lot of
questions out there that peoplehave.
But you cannot be successful onAmazon if you don't have brand
(34:35):
registry and you're trying tosell your own brand and if
you're an agency and you'reworking with a brand, they need
to have brand registry if you'regoing to help them become
successful.
So it all comes back to you gotto have a trademark.
A lot of brands already do.
I've worked with brands whereand I guess this is a question
like like we've worked withbrands and like, oh my God, we
(34:57):
got that trademark so many yearsI don't even know where the
hell it is, I don't know who thelawyer is Like, what do you do
when you're a brand and you'relike I don't know, how do I find
my trademark?
I don't have it in my drawer.
Janet Moreira (35:08):
Well, I mean, first of all you can search it
up on the USPTO right.
So if you think you have atrademark, so their website.
The USPTO website, yes, is agreat resource.
Start there and see if theapplication and the registration
is still alive.
I mean, there is a shelf lifeto trademark registrations,
right?
If you don't take action tomaintain them.
So the trademark registrationis issued for typically a 10
(35:33):
year period, but there arefilings that you have to do at
the fifth and sixth year, theninth and tenth year and every
nine to 10 years thereafter tokeep the registration alive,
right?
So there are times whenregistrations lapse due to the
fact that these things are notmaintained.
However, if that occurs, youknow again, reach out to council
, see if they can help you filea new application.
(35:55):
But you know, just because youhad a registration once doesn't
automatically guarantee you'regoing to get that again, because
in that intervening timesomeone else may have filed an
application that now conflicts,right?
Adam Shaffer (36:06):
So, yeah, so when we set up the brand registry
accounts I think obviously foreverybody it asked you for a
code and it goes to the law firmthat actually filed the
registration for you.
Janet Moreira (36:22):
I think.
Adam Shaffer (36:23):
I think that's how it works and we had a brand
that we were working with.
You know it's a horrible story,but their lawyer died and they
didn't even have a way to getthrough, like the firm must have
closed.
It was a one.
How do you move it to somebodylike you?
Because it's emailing tosomebody who's dead.
Janet Moreira (36:39):
Well, okay, so the thing that you can do there
is having your new council filea change of correspondence right
, Hiring an attorney.
Adam Shaffer (36:47):
Okay, so you can do that.
It's not locked forever Okay.
Janet Moreira (36:50):
Yeah, I am.
You can do that File the changeof correspondence, identify a
new council and then thereafter,once that's been reported with
the USPTO and the information'sbeen updated, then you can go
through that process again.
Adam Shaffer (37:03):
I didn't realize that it sounded like it was like
a dead end, so I'm going to.
No pun intended, but it wasobviously horrible, so cool.
So again, I think IPAccelerator is a great program.
I think your firm has done usreally well.
You know we really appreciateeverything you've done and I
think that if anybody out thereneeds help just with basic
(37:26):
questions about trademarks oryou want to file the trademark,
I do recommend.
You know working with Janet andCaldera Law.
They've been doing this foreverand they're a vetted Amazon IP
Accelerator partner.
You know how do people get intouch with you if they want to
reach out.
Janet Moreira (37:42):
They can get in touch with me by contacting me
through the Amazon SellerCentral dashboard.
Right, there's a way for you tonavigate and find IP
Accelerator services and you cancontact the provider and that's
.
We show up on the Amazonplatform as Maven by Caldera Law
.
You can also reach out to us byemailing us at trademarks at
(38:04):
caldera c-a-l-d-e-r-a dot law,or you can call our office,
which is 305-967-7450.
So all kinds of ways that youcan reach out to us and get in
touch.
Adam Shaffer (38:18):
We'll put that information in the show
Wonderful, so people can linkover to that.
That'll be great, yeah, and anyparting words for our guests
today when we wrap things uphere.
Janet Moreira (38:28):
Well, I mean, I think one of the important
things that you can think aboutis that you know the trademark
once you have one is not justfor your use on Amazon right.
Once you have a registeredtrademark, you have the
exclusive right to use thattrademark in commerce in the
United States.
That's on any platform.
That's, you know, at a retailstore, that's at mom-and-pop
(38:49):
shops, that's anywhere.
So it's very important to notethat trademark rights when you
file them with the USPTO arebeyond the Amazon seller
platform.
Adam Shaffer (38:59):
Yeah.
Janet Moreira (38:59):
Very valuable.
Adam Shaffer (38:59):
That's for sure.
Great.
Well, thank you very much.
Important topic and hopefullyyou'll join us again, absolutely
.
Janet Moreira (39:05):
And we can go even deeper.
Adam Shaffer (39:06):
Well, thanks so much.
Speaker 1 (39:08):
Thank you.
Thank you for watching anotherepisode of the Planet Amazon
podcast, where we talk allthings Amazon.
If you want to learn about howto accelerate your sales on
Amazon, visit PhelpsUnited'swebsite at PhelpsUnitedcom.
Welcome to the Planet Amazon podcast with Adam
Shaffer, where we explore theworld of Amazon and other
e-commerce marketplaces.
Join us as we delve into thelatest strategies and tactics
for successful selling on theworld's largest online
marketplace.
Hello everybody.
Adam Shaffer (00:19):
I'm Adam Shaffer and welcome to Planet Amazon,
where we talk about all thingsAmazon, and today we're going to
talk about a really importanttopic.
In fact, it's almost impossibleto be successful on Amazon if
you're a seller on Amazon or abrand on Amazon without having
brand registry, and so it soundssimple, but there's definitely
(00:41):
some steps you need to take, andthe most important step is you
have to actually have a brandand a trademark, or Amazon will
not allow you to create a brandregistry account, which gives
you a whole bunch of benefitswhich we'll talk about, and to
help me explain the importanceof a trademark and how to get a
trademark and how Amazon goesabout all this is our special
(01:03):
guest today Janet Moreira fromCaldera Law.
Thank you for joining us today,janet.
We really appreciate you beinghere.
Janet Moreira (01:13):
Well, thank you for having me.
I look forward to talking aboutthis.
Adam Shaffer (01:17):
So you taught me about trademarks because we were
trying to figure out how to geta brand registry account going
and the first thing we found weneeded was a trademark.
And we went, tried to do itourselves and it was very
complicated and we were noviceswe're not in the trademark
(01:37):
business and we really struggledtrying to figure out how to do
it ourselves although I knowpeople do it.
And then the waiting game ofwaiting to get the brand
registry account set up.
And then we learned about aprogram that Amazon has called
IP Accelerator, and we met youthrough there.
So can you explain what IPAccelerator is?
(01:59):
And then we could get into thefun part of talking about
trademarks.
Janet Moreira (02:03):
Sure, well, again , thank you for having me today.
I look forward to talking aboutthis.
This is something I'm verypassionate about, and I've been
part of the Amazon IPAccelerator program since its
inception in 2019.
So Amazon IP Accelerator isbasically a program benefit for
(02:24):
Amazon sellers, and so Amazon'sIP Accelerator consists of
Amazon's vetted law firms, whoare trusted experts who can help
businesses establish their IPprotection in the United States
and expand their brand'sfootprint in the Amazon
marketplace.
So we are a law firm and we arean exclusive provider of legal
(02:48):
services.
If you use one of the vettedlaw firms in the Amazon IP
Accelerator program, then youwill have early access to Amazon
brand registry, which isanother program for Amazon
sellers.
Adam Shaffer (03:02):
Yeah, I mean, and so that's what we learned by
doing it ourselves We'd have todo the waiting game, and I think
that's still pretty accuratewhere you have to wait.
It could take six months to ayear to get a use of the
trademark, and that's if you aresuccessful.
But with an IP Acceleratorpartner like your company, it
(03:24):
was like a couple of weeks.
Janet Moreira (03:25):
Yeah, yeah.
So the primary benefit of IPAccelerator is that you have
early access to Amazon brandregistry.
So Amazon brand registry is aprogram for Amazon sellers with
registered brands right Now.
The USPTO, the United StatesPatent and Trademark Office,
(03:46):
takes a very long time thesedays to look at trademark
applications due to the influxof trademark applications being
filed.
So when you file an application, it could be 10 to 12 months
before your application islooked at, which means the
registration process is evenlonger than that.
So Amazon reacted to that andinitiated the IP Accelerator
(04:09):
program, giving sellers theability to gain early access to
brand registry, not having towait until the brand is
registered, but only wait untilthe application has been filed,
so long as you are using one ofthese vetted law firms.
Adam Shaffer (04:26):
So I hope that answered your question.
It does, and what we learnedalso is that, again, if you
don't do it right, using thisAccelerator is great because you
can get your brand registry setup you still have to go through
all the motions of securingyour trademark until it becomes
(04:46):
officially your registeredtrademark, or Amazon could kick
you off the brand registry.
Is that what happens?
Janet Moreira (04:52):
Yeah, absolutely.
I mean, again, keep in mindthat Amazon brand registry is
for registered brands.
So, while you can gain earlyaccess to brand registry through
IP Accelerator think of it assort of a probationary period
you ultimately have to get atrademark registration in order
(05:12):
to stay in brand registry.
So you do want to work with.
I mean, while the trademarkapplication is a pretty
straightforward process, it isone that is a legal process,
right?
And so when you're dealing witha legal process, it is
important to have someone guideyou through that process,
(05:34):
because the trademarkapplication has long-term and
legal consequences and should becarefully prepared by someone
who understands those things.
Adam Shaffer (05:43):
Yeah, for sure, and we definitely ran into some
areas.
I think the first trademark wedid with you there was
definitely you found someconflicts and we were, with your
help, able to get through theconflicts and be able to keep
the brand name that we wanted.
So it's not, like I said,straightforward.
If we did it ourselves, I mean,I think we would have gone down
(06:07):
a path, spent a lot of time andmoney on it and then we would
have had a kind of create awhole brand new brand name again
.
So thank you for that.
But so now, taking it back justa little bit, and then we'll
talk more about brand registry.
For those that don't understandand I know you definitely do
what's the trademark?
What do you need one?
What is it for?
Janet Moreira (06:29):
Well, that's a very loaded question, so let's
start with the basics.
So a trademark is a symbol, aword or phrase that
distinguishes your company'sproducts or services from other
companies.
Everything that you buy in astore has a brand associated
with it.
It is a.
It can provide legal protectionto the owner of the trademark
(06:49):
to have exclusive rights to usethat trademark in commerce and
to prevent others from using itwithout their permission.
Brands are important forbusinesses because they help
establish brand identity andreputation by creating this
association between thetrademark and the quality of
products or services.
Trademarks are greatcommunication tools, right?
(07:10):
They immediately tell acustomer about your, about your
brand, about the quality of yourproducts and services, and a
strong trademark basicallycreates consumer trust by
ensuring that the trademark isalways associated with that same
level of quality for theproducts and services.
Adam Shaffer (07:28):
And and trademark it could be.
You said words, but it could bea picture too.
Janet Moreira (07:32):
I could be a part , a picture, it can be a sound.
If you think about Yahoo, ifyou think about the peacock and
the chime for NBC, there's ancolors, it's, it's anything that
acts as a source identifier,and it can be a combination of
those things as well.
Adam Shaffer (07:49):
I didn't realize you could trademark a sound.
Yeah, okay, so like the NBC Don, like, like that chime is, yes,
actually more Okay, I didn'trealize, cool, I had to come up
with a sound, so cool, so then.
So then, if you do have thetrademark Whether it's with
Amazon on brand registry or not,on Amazon, and somebody says,
(08:13):
hey, I like that brand name, Iwant to use that brand name, how
does it work?
How do you protect yourself?
Janet Moreira (08:20):
Okay, so a trademark protects you.
I let me talk about a littlebit about what a trademark
Protects against, right?
So a trademark covers you forthe, the trademark that you
filed.
So whether it's a logo, whetherit's words, whether it's words
plus design in Combination withthe goods and services that
(08:43):
you've listed in yourapplication, right.
And then it protects you forthose things on a nationwide
level upon registration, right.
So it gives you very broadprotection across the United
States Against confusinglysimilar marks.
So the standard for whether aparticular use conflicts with an
existing trademark is notwhether the two marks are
(09:05):
identical.
That is a large misconception.
I'm good, most people right.
It protects you against marksthat are similar to yours.
So it gives you a much broaderlevel of protection Then one
typically thinks of when theythink about a trademark.
It protects it for the productsand against confusingly similar
marks.
Adam Shaffer (09:25):
So so that's helpful.
I didn't.
I didn't realize that.
And when you get a brand ortrademark and you're based in
the US and you're selling in theUS, you're setting it up with
the US patent and trademarkoffice, the US PTO, right, what
happens if you want to sell inCanada or in Europe somewhere?
(09:46):
You have to do it again.
Janet Moreira (09:47):
Yeah, and rights are territorial, so every
country has trademark laws,right?
So when you want to, aTrademark in another country
does not protect you in the USand a trademark in the US does
not protect you in othercountries, right?
So international sellers canregister a trademark wherever it
(10:09):
is that they are selling theirproducts and services, and
trademark rights are granted bythe individual country
Registries trademark registriesbased on that country's specific
trademark laws.
So when a company registers atrademark in a particular
country, those rights arelimited to that country's
borders, right?
(10:30):
So while a particular sellermay have rights in a particular
country, maybe their homecountry that does not
automatically extend to theUnited States and vice versa US
sellers that have a US trademarkdoes not mean that they have
rights outside the US.
Adam Shaffer (10:45):
Wow, so you really got to focus.
If you're going to startselling in other countries, your
brand might already be beingused out there for all you know.
You don't know withoutsearching, or somebody could
also see what you're doing inthe US and try to use that brand
in a different country.
Janet Moreira (11:00):
Absolutely, it happens all the time.
Adam Shaffer (11:02):
Oh man, that would bum me out for sure.
Cool.
So now I guess the big questionis you know why brand registry?
So, you know, I think I wouldwant to trade more.
So I want to protect my brandand I want to, you know, have
this unique brand to Tell people, learn about my products and
understand it's a trusted source, and blah, blah blah.
(11:23):
But I think that so many of thesellers on Amazon want it
because a they want that, butthey also Need the benefits of
Amazon's help to protect theirbrand.
So once you get brand registry,it opens up a whole, you know,
set of tools that Amazon givesyou.
So if you don't have your brandRegistered with Amazon, which
(11:46):
means you have to have atrademark- or you cannot get
brand registry, so it's like thechicken and the egg, but you
got to have that, that trademark, first.
Once you have brand registry, itunlocks a plus content so you
could tell a much better storyabout your brand on Amazon for
sure, and those that don't havea plus content really, really
(12:07):
suffer because it just You'llhave competitors that do have a
plus content tell a much betterstory about their brand and
their products and it'll giveyou a much lower conversion
without it.
And and you really do want totell the story, because one
thing you want is to explain tocustomers why they want your
product, how it sells, theirproblems, and you also don't
(12:27):
want returns from people saying,oh, let me try that if you
could tell the right story,that'll hopefully prevent some
returns and keep people happy.
Also, you got to have atrademark, to have brand
registry, so you can have abrand store or, you know, seller
store.
So without that, if you want toagain tell a better story about
your brand and differentiateyourselves, you need to have
(12:50):
Brand registry.
So you have to have a trademark.
If you want to do vine, whichis a reviews program that Amazon
has, and in fact, if you have abrand registry account.
They'll give you one freebieWith 30 reviews.
But to get your productsreviewed on Amazon most in role
in their vine program, withouthaving a trademark and brand
registry you can't have vine.
(13:11):
If you want to report aviolation where somebody is
encroaching on your brand onAmazon, without having a legal
trademark and brand registry,they won't even accept the case.
So you need to have thetrademark, to be able to have
the brand registry, to be ableto protect your brand and Be
able to put cases in aboutpeople violating, maybe
(13:33):
counterfeiting or doing whateverthey're doing.
And also it gives you somebodyto talk to at Amazon there's a
brand registry support team thatis usually quite helpful to
help you solve some of theseproblems.
Also, if you want to do certaintypes of advertising on Amazon,
you have to have a trademark,to have a brand registry, to be
(13:54):
able to do brand Advertising andvideo advertising.
So again, it all goes back tohow do I start?
I want all these great features.
I want to protect my content.
I don't want folks changing thecontent I'm.
I want help getting bad peoplethat are abusing my trademark
and my brand off of Amazon.
You got to have that trademark,so I mean it.
(14:17):
It all starts there, and sowhat are, what are some cases?
Have you ever been involvedwith sellers on Amazon that say,
hey, janet, I got the trademark, it's great, but some other
people are using it like give ussome of the, the, the stories
that you've seen.
Janet Moreira (14:34):
Yeah, I mean I have clients who utilize the
takedown provisions On Amazonwith with their registered
brands, when they see productsthat are utilizing their
trademark.
I mean there's two different.
There's really two differenttypes of Sort of unauthorized
uses that really come into playon Amazon.
I would say the first iscounterfeiting, and what
(14:58):
counterfeiting is is essentiallythe Is knockoffs, right, so
pretending to be a brand thatyou're not.
It is the manufacturing or theselling of items that look like
a Genuine item but they are notthe genuine item.
So they are using someoneelse's brand to sell inferior
(15:19):
products, right, and using thatbrand to attempt to pass off
fake products as real products.
That's counterfeiting, okay.
The easiest way to think aboutcounterfeiting, I think, for me
is fake purses, right, which isan entire industry.
In an everyday life, it'spretending to be a Chanel bag
when it's really not a Chanelbag.
Another method of unauthorizeduses are the selling of products
(15:44):
using trademarks that are veryclose Remember I use the
language confusingly similarusing trademarks that are very
close to your trademark, right?
So trademark infringement isselling similar products to the
products that you're selling,not necessarily with your exact
brand name, but using a brandname that is so close to your
(16:05):
brand name, that it's causingconfusion in the marketplace,
right?
So when it comes to enforcingagainst these things on Amazon,
amazon is not going to payattention and you're not going
to have these tools available toyou unless you have a
registered trademark.
And the only way you get aregistered trademark is if you
actually file for one right.
And the way to get thesebenefits early is by utilizing
(16:28):
IP accelerator program.
So, yes, we utilize Amazon'stools frequently for our clients
that have registered trademarks.
Adam Shaffer (16:38):
Do you ever help them on Amazon, or do you just
advise them?
How does that work?
We haven't tortured you forthat yet.
Janet Moreira (16:45):
Yeah, I mean I am not an Amazon platform expert.
I would consider myself someonewho knows a lot about
trademarks.
I do have some knowledge ofutilizing some of the systems,
including brand registry, andhow to enroll the brand and
navigate that system, whichactually can be quite complex,
(17:06):
to even enroll your brand inbrand registry.
So I do assist with that and Iobviously have knowledge of the
tools to report infringements onAmazon so that I do utilize.
Adam Shaffer (17:21):
What about writing the case?
Would you write it or you justtell them what to do?
Okay, so that's something,because sometimes writing it the
way Amazon wants to hear it isreally important.
Janet Moreira (17:29):
Absolutely.
Yeah, of course, we know how toutilize the tools, and, being
that, I have the trademarkbackground.
Amazon is one platform where weenforce clients' trademark
rights, but it's not the onlyplatform, and so, in any arena
where we're doing that, we haveto create the story and provide
(17:50):
the information that the arbiteror the person making the
decision on the case is going toneed to hear in order to move
the case forward.
So, yes, we are able to do that.
Adam Shaffer (18:01):
And one thing you taught me also was that
trademark is kind of specific tocategory right, the product
category.
So can there be the same brandname but somebody selling
computer equipment and somebodyselling clothing?
Janet Moreira (18:19):
Yes, there can be .
There is a world where that canexist.
Now, not if it's Apple, becausethat's a famous trademark right
, but there can be identicalmarks on very different goods
and services absolutely so.
Adam Shaffer (18:34):
when you register the trademark, you need to be
pretty specific about what typesof products that you put us
through for sure.
Janet Moreira (18:41):
Yeah, the USPTO requires specificity there.
It is one of the requirementsof the trademark application.
So you cannot file in a generalclass oh, I want class 25.
You can't do that.
You can't have broaddescriptions of goods and
services.
If you file something with avery overly broad description,
(19:04):
the USPTO is going to rejectthat application.
So the description of goods andservices has to be sufficiently
specific and that is anotherreason why hiring counsel is so
important, because theyunderstand the intricacies of
that and most people who are notdoing this on a daily basis or
(19:26):
have an expertise in this areadon't understand those little
technical nuances that haveconsequences and are very
important to the trademarkprocess.
Adam Shaffer (19:37):
Yeah, I mean, one thing we ran into was we had
products in our minds that wewanted to create but they're not
available yet and you kind ofnavigated us like you could
actually get a trademark for aproduct that doesn't exist yet,
but then you need to do work tomake sure that you could keep
your trademark.
So can you explain more aboutthat, because that was a lot of
(20:00):
running around on our part toget sorted out.
Janet Moreira (20:03):
Well, I mean, that is really the difference
between filing a use-basedapplication or an intent to use
application.
So with a use-based application, the only goods that you can
identify in your application aregoods that you are using the
trademark on and or have sold.
So that is very specific right.
(20:24):
But most sellers that I'veencountered not only are maybe
selling products currently, buthave an idea of what they want
to sell in the future.
Right and when there areproducts that you have not sold
with the trademark yet, you wantto include those on an intent
to use application.
Now there is a balancing act tothat.
What you want to sell 10 yearsfrom now might not be
(20:48):
appropriate to include in atrademark application that
you're filing right now.
There are strategicconsiderations to being specific
, to having a timeline for thegoods and services to be sold
and not necessarily filing anapplication for the pie in the
sky goods and services that youmight want to file or might want
(21:08):
to sell five, 10 years from now.
Adam Shaffer (21:12):
Yeah, and it can't just be a picture, right?
You need to actually have aproduct with the logo on it or
the packaging.
How does that?
What's the rules with that?
You know it can't be, avaporware.
Janet Moreira (21:24):
Yeah, with regard to ultimately making use of
your trademark on your products,the trademark has to appear on
the product or it has to appearon the packaging for the product
, and it has to be exactly asyou've applied for it.
You cannot make changes.
So if you have a logo that youlove at the time that you file
(21:48):
your application, and then threemonths later, when you go to
file, you know, to design yourpackaging, you change the logo.
Well, now it's different, right, and that might require the
filing of an entirely newapplication.
So at the time of filing, youwant to make sure that whatever
you are filing is the one thatyou're going to be using, and
then, when you actually make useof it, you want to make sure
(22:11):
that it's permanently affixed toyour products.
So permanently affixed meansthat it's not a sticker.
You know that it's printed onthe packaging, that it's
embossed on your product, thatit's attached to a hang tag
that's attached to your product.
So we help clients navigate,developing specimens, making
(22:34):
sure that marketing materialscorrectly use the trademarks.
There's a number of things thatwe can do to assist our clients
with ensuring that the usesthat they're making are
compliant with trademark law.
Adam Shaffer (22:51):
Yep, and you know, one area that you kind of
helped us with also is likewe'll fall in love with the
brand name that we want to useand you'll say, I don't know if
you want to try to use that.
And we'll say, oh, come on,Janet, like we love this name.
What are we going to do?
And your advice would be what?
Well, somebody might be usingit.
(23:14):
You do it, yeah it depends.
Janet Moreira (23:16):
It depends on that specific trademark.
There are so many things thatgo into it.
I mean, a lot of people lovedescriptive marks.
They love to tell customersimmediately what they're selling
.
You know I'm selling kitchenspatulas so I want to call my
trademark the best kitchenspatulas ever.
You know, whatever it is peoplelike to describe their products
(23:38):
, those make the worsttrademarks right, because not
only are you, do you want todescribe it that way, but so
does every one of yourcompetitors.
So you know, descriptive markstend to have risk associated
with it.
That, you know, is I.
With any business that'sstarting out, I like to navigate
(23:59):
them away from things that arerisky things that are going to
be costly, things that are goingto be problematic down the line
.
I mean, when you're starting abrand, you should be starting a
brand that's going to carry someweight, that's going to be able
to develop goodwill, that'sgoing to be different than your
competition.
So I try to guide my clientswith keeping that in mind.
Adam Shaffer (24:22):
Plus, in our case, we'd be investing in packaging
and in advertising and trying tobuild the brand.
And then you might come back afew months later and say, hey
guys, we got a problem here.
So what would happen?
You get notified by the USP,uspto, that, hey, this is a
problem, yeah, or a company.
Janet Moreira (24:43):
How does it work?
Does the?
Adam Shaffer (24:44):
USPTO come to you or does a company come to you?
Janet Moreira (24:46):
Either one or both.
Adam Shaffer (24:48):
Really Either one or both.
Janet Moreira (24:50):
So the USPTO, when they take a look at
trademark applications, they'regoing to look at trademark
applications or registrationsthat are filed with the USPTO.
The USPTO is not going to lookat the marketplace to determine
whether or not there is aconflict Right, because we're
talking about now conflictsbetween one mark that's been
filed versus another mark that'sbeen used before or filed
(25:14):
before, right?
So as far as the USPTO isconcerned, they're going to look
at their own database andextract those trademarks that
are similar to yours, right?
That's one potential issue, andif the USPTO finds a trademark
that is similar to yours, thenthey're going to notify you
through what's called an officeaction, which is another way to
(25:36):
say a refusal, and they'll letyou know why it's been refused
and then you have theopportunity to respond, right?
So that's one issue that couldcome up if you're using a mark
that's similar to somebodyelse's mark.
Another issue that could comeup is that the owner of that
trademark right has an issuewith you and your application,
and they have an opportunity tooppose your application through
(25:58):
the USPTO.
They have an opportunity tofile a lawsuit against your,
against your company, and that'strue regardless of whether or
not they have a trademarkregistration.
So there are.
There are rights in the US thatcome from use that are common
law rights.
So, even if someone has neverregistered a trademark, they
have the opportunity to file alawsuit.
(26:20):
Now I say that right, there arerights that come from use in
the United States.
So even if you've never filed atrademark application, you can
have trademark rights.
Now, when it comes to Amazon,common law rights don't win the
day.
You don't get Amazon brandregistry with common law rights.
Adam Shaffer (26:43):
You have to have a piece of it you get.
Janet Moreira (26:44):
Amazon brand registry with a registered
trademark?
Right, so there's a difference.
It has different implications,different considerations.
But when that occurs, when theUSPTO issues an office action,
then you have the opportunity torespond.
But it's not an inexpensiveprocess at that point, right.
(27:07):
So it becomes expensive becauseyou have to write a legal
memorandum.
You have to have it withsupporting evidence and case law
and exhibits to make yourargument against the US
government as to why they shouldchange their mind.
That's not always an easy task.
Now, that's if the USPTOobjects right.
If somebody else objects toyour trademark application,
(27:30):
whether it's through the USPTOor whether it's through the
filing of a lawsuit, that's alsoan expensive endeavor, right?
So at that point, a lot oftimes people just abandon their
trademark right, I'm sorry, goahead.
Adam Shaffer (27:47):
What was funny is that I used to think companies,
they don't look at this stufflike they have their thing.
They're going through theirlives and they're going, and we
put a trademark in for somethingthat has nothing to do with
what they do, but yet somehowthey know.
So how do they know?
Janet Moreira (28:04):
Well, a lot of companies, a lot of brand owners
, right, they utilizesubscription services where
those subscription services willpull and and extract any
trademark application or filingsometimes around the world,
depending on the nature of thesubscription that you have of
trademark applications that arepotentially conflicting with
(28:27):
your mark.
So large brand owners, right,will have these watch services
in place so they're watching themarketplace to protect their
brand and make sure that theyenforce their brand against
potentially conflicting marks.
Adam Shaffer (28:42):
Yeah and so, and so that's something again,
because we were, hey, janet, wewant to use this brand and
you're like I don't know, likemaybe you shouldn't.
We went through anyway, we werein this electronics category
that we were trying to do, andthen somebody was doing this
watching, and they came to usand they said, hey, you know you
can't really use that brand andit's soft, but you helped us.
(29:05):
I mean, we had to go through acouple of steps, but you help
negotiate something with them sowe could still use the brand.
Janet Moreira (29:12):
Yeah, I mean, sometimes it's a matter of
negotiating some sort ofcoexistence agreement, but again
, this is the type of thing thatdoes require the assistance of
counsel to help.
Adam Shaffer (29:24):
We would have been dead with that.
We would have abandoned becausewe would have never thought we
could go up against this largecompany and you're, you believe
maybe they'll carve somethingout for us and let us, you know,
exist.
So that was, that was good.
But I guess the big the moralof the story is you should work
(29:49):
with a company like yours orfirm like yours to try to figure
out your best chance of successup front so you don't have to
go through all this stuffbecause we've gone through some
of this stuff.
And if we would have just spentthe time with you to say, hey,
you know, let us do some diggingaround first before you file,
(30:10):
that would have been time wellspent, I think.
Janet Moreira (30:13):
I mean I couldn't agree with you more.
I think you know the process,like I said, is straightforward,
but there are a lot of nuances.
You know it is a legal processand with any legal process there
are unforeseen things that comeup that only a council can
(30:33):
navigate and there are strategicconsiderations that doing so
and considering these things atthe beginning of the process may
alleviate some of the potentialcomplications later on.
So obviously I am a hugeproponent of utilizing council
in this instance.
I mean, if I you know, I lovethis process.
(30:58):
I really enjoy helping sellersand brand owners navigate this
process and finding creativesolutions to get you the
trademark that you want, by alsobeing reasonable and doing
diligence and research inadvance of committing fully to a
trademark.
Adam Shaffer (31:18):
I mean awesome.
So how do people access IPAccelerator?
How does it work with Amazon?
Janet Moreira (31:27):
Well, ip Accelerator is actually you know
, it is a free program right,you have to have an Amazon
seller account, so that is oneof the things that you do need,
but really it's.
Ip Accelerator is a tool thatis found on the Amazon seller
platform and, as long as youhave an Amazon seller account,
(31:50):
you can find us throughexploring some of the services
that Amazon offers.
Adam Shaffer (31:56):
And we found you through their IP Accelerator,
right.
So why did we go with you?
Well, you had the coolest dad,but it was because you were you
know what it was, I don't knowwhy because you were local to us
and we felt, oh, that's cool,we'll pick somebody local.
But it doesn't have to be thatway.
I mean, you don't need to benext door to somebody to work
with them.
So you know, I think you knowyou go through there and they're
(32:19):
probably all pretty good,although your firm is probably
the best.
Janet Moreira (32:23):
I have to say that all of them are really
great firms.
I mean, we are.
We are colleagues more so thanwe are competitors.
So the fact that they're inthis program means that they
have gone through a vettingprocess, it means that they know
what they're doing and,ultimately, I think, when you
choose council, you have to picksomeone that you're comfortable
(32:46):
with.
Right, this is a long termprocess.
This is not filing, and thenwe're never going to talk to
each other again.
Right, we want to be astrategic partner in the
development of your business.
Your business, hopefully, isgoing to grow beyond one brand.
It's going to grow beyond oneproduct.
Right, so we want to be therealong with you for this ride
(33:09):
that is entrepreneurship.
Right, and selecting council isa personal decision.
Any one of these IP acceleratorfirms, from a business
standpoint, is going to be ableto help you navigate this
process.
So then it's beyond that, towho is wants to be there for the
ride?
Right, and you know, hopefullythat's that's me.
Adam Shaffer (33:30):
Well, I mean, we, we work with you once and we've
been back several times withmultiple brands.
So I think once you find theright match, you continue on
with them, because it'sdefinitely if you're an
entrepreneur, it's never onebrand.
I don't.
I don't think it's possible.
So I think it continues on.
And again, it's important forAmazon because you need those
tools if you want to besuccessful, but you need the
(33:51):
trademark anyway.
So I know it sounds like, hey,it's a boring story, but we were
just at Amazon Accelerate inSeattle and there was a breakout
on trademarks, ip acceleratorand brand registry and it was
probably the busiest sessionthey've had, where people were
sitting around and they theydidn't really like you sitting
around the wall, but they madeyou stand up, but but it was
(34:11):
really well trafficked and somany people have questions about
trademarks and how do I get atrademark and do I need it in
all the countries, and so Ithink you know, just spending
time with you and understandingit would help, because that was
a really short session and Ithink there's still a lot of
questions out there that peoplehave.
But you cannot be successful onAmazon if you don't have brand
(34:35):
registry and you're trying tosell your own brand and if
you're an agency and you'reworking with a brand, they need
to have brand registry if you'regoing to help them become
successful.
So it all comes back to you gotto have a trademark.
A lot of brands already do.
I've worked with brands whereand I guess this is a question
like like we've worked withbrands and like, oh my God, we
(34:57):
got that trademark so many yearsI don't even know where the
hell it is, I don't know who thelawyer is Like, what do you do
when you're a brand and you'relike I don't know, how do I find
my trademark?
I don't have it in my drawer.
Janet Moreira (35:08):
Well, I mean, first of all you can search it
up on the USPTO right.
So if you think you have atrademark, so their website.
The USPTO website, yes, is agreat resource.
Start there and see if theapplication and the registration
is still alive.
I mean, there is a shelf lifeto trademark registrations,
right?
If you don't take action tomaintain them.
So the trademark registrationis issued for typically a 10
(35:33):
year period, but there arefilings that you have to do at
the fifth and sixth year, theninth and tenth year and every
nine to 10 years thereafter tokeep the registration alive,
right?
So there are times whenregistrations lapse due to the
fact that these things are notmaintained.
However, if that occurs, youknow again, reach out to council
, see if they can help you filea new application.
(35:55):
But you know, just because youhad a registration once doesn't
automatically guarantee you'regoing to get that again, because
in that intervening timesomeone else may have filed an
application that now conflicts,right?
Adam Shaffer (36:06):
So, yeah, so when we set up the brand registry
accounts I think obviously foreverybody it asked you for a
code and it goes to the law firmthat actually filed the
registration for you.
Janet Moreira (36:22):
I think.
Adam Shaffer (36:23):
I think that's how it works and we had a brand
that we were working with.
You know it's a horrible story,but their lawyer died and they
didn't even have a way to getthrough, like the firm must have
closed.
It was a one.
How do you move it to somebodylike you?
Because it's emailing tosomebody who's dead.
Janet Moreira (36:39):
Well, okay, so the thing that you can do there
is having your new council filea change of correspondence right
, Hiring an attorney.
Adam Shaffer (36:47):
Okay, so you can do that.
It's not locked forever Okay.
Janet Moreira (36:50):
Yeah, I am.
You can do that File the changeof correspondence, identify a
new council and then thereafter,once that's been reported with
the USPTO and the information'sbeen updated, then you can go
through that process again.
Adam Shaffer (37:03):
I didn't realize that it sounded like it was like
a dead end, so I'm going to.
No pun intended, but it wasobviously horrible, so cool.
So again, I think IPAccelerator is a great program.
I think your firm has done usreally well.
You know we really appreciateeverything you've done and I
think that if anybody out thereneeds help just with basic
(37:26):
questions about trademarks oryou want to file the trademark,
I do recommend.
You know working with Janet andCaldera Law.
They've been doing this foreverand they're a vetted Amazon IP
Accelerator partner.
You know how do people get intouch with you if they want to
reach out.
Janet Moreira (37:42):
They can get in touch with me by contacting me
through the Amazon SellerCentral dashboard.
Right, there's a way for you tonavigate and find IP
Accelerator services and you cancontact the provider and that's
.
We show up on the Amazonplatform as Maven by Caldera Law
.
You can also reach out to us byemailing us at trademarks at
(38:04):
caldera c-a-l-d-e-r-a dot law,or you can call our office,
which is 305-967-7450.
So all kinds of ways that youcan reach out to us and get in
touch.
Adam Shaffer (38:18):
We'll put that information in the show
Wonderful, so people can linkover to that.
That'll be great, yeah, and anyparting words for our guests
today when we wrap things uphere.
Janet Moreira (38:28):
Well, I mean, I think one of the important
things that you can think aboutis that you know the trademark
once you have one is not justfor your use on Amazon right.
Once you have a registeredtrademark, you have the
exclusive right to use thattrademark in commerce in the
United States.
That's on any platform.
That's, you know, at a retailstore, that's at mom-and-pop
(38:49):
shops, that's anywhere.
So it's very important to notethat trademark rights when you
file them with the USPTO arebeyond the Amazon seller
platform.
Adam Shaffer (38:59):
Yeah.
Janet Moreira (38:59):
Very valuable.
Adam Shaffer (38:59):
That's for sure.
Great.
Well, thank you very much.
Important topic and hopefullyyou'll join us again, absolutely
.
Janet Moreira (39:05):
And we can go even deeper.
Adam Shaffer (39:06):
Well, thanks so much.
Speaker 1 (39:08):
Thank you.
Thank you for watching anotherepisode of the Planet Amazon
podcast, where we talk allthings Amazon.
If you want to learn about howto accelerate your sales on
Amazon, visit PhelpsUnited'swebsite at PhelpsUnitedcom.
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