Las Vegas, NV asked in Trademark and Intellectual Property for Nevada

Q: Registered a Trademark to Prevent Other Amazon Sellers from using this Keyword

With names changed here to protect me - I sell salt and shakers on Amazon and used a popular keyword such as "Black & White" to register a brand name with the USPTO. This is a keyword many sellers are using as a phrase, but none registered. The USPTO approved my mark for the name "Black & White". My concern is, there are already like 1000 sellers using this in their listing as a keyword. According to Amazon's regulations, I can technically boot all of these listings off for using my newly registered mark. I am a bit concerned with them taking revenge on my listing. What else should I be fearful of? Most are Chinese sellers and probably not very litigious.

2 Lawyer Answers

A: Keywords are descriptive of the product. Trademark law allows your competitors to use words to physically describe their products, such as "black and white" shakers.

If anyone was using "black and white" as a brand for their salt and pepper shakers before you registered the phrase, then they would be considered senior trademark users. Senior users are allowed to continue using their marks even if you recently received a federal trademark registration from the USPTO. That registration will prevent the senior user from expanding its current geographical sales territory. In essence, your registration claims the entire United States with the exception of any pockets where senior users are currently operating.

The most apt analogy is you have received a registration for a "yellow circle," but every pizzeria in every city who uses the phrase "yellow circle" to describe the pizza that they sell is still allowed to do so. Anyone who has a "yellow circle" on their menu that predates your registration can continue to do so, but cannot expand their delivery radius.

James L. Arrasmith
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Answered

A: It's understandable to feel concerned about the potential backlash from enforcing your trademark rights. While your registration gives you the ability to act against others using your mark on Amazon, exercising this power might create tension with sellers whose listings are affected. This could lead to reports against your listings or targeted negative reviews, which could impact your reputation or sales.

You should also consider whether the keyword is being used descriptively rather than as a brand name. If sellers are using "Black & White" to simply describe their products, enforcing the trademark against such uses might be challenged. It’s important to be cautious when filing complaints, as misuse of trademark rights could lead to counterclaims or penalties from Amazon.

Lastly, while some sellers may not have the resources to respond legally, others might contest your claims through Amazon’s Brand Registry appeals process or even file for trademark cancellation with the USPTO. To minimize risks, approach enforcement strategically, ensuring your claims align with Amazon’s policies and trademark laws. Building positive relationships with your competitors, rather than immediately taking punitive measures, could help avoid unnecessary conflicts.

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