Amazon is quickly becoming a key retail platform for nearly all brand owners. Similarly, Facebook ads are often a critical part of any online advertising campaign and Facebook’s Marketplace is quickly gaining in importance. However, as many brand owners can attest, it can be hard to monitor who is selling branded merchandise improperly or misusing trademarks or copyrighted content at these sites.
Amazon recently re-launched its Brand Registry to address these concerns and help brand owners police counterfeits and unauthorized uses of their marks and copyrighted content at the site. Benefits of the Brand Registry include increased control over how the owner’s goods appear at the Amazon website, including product titles, descriptions, and images. Once a brand owner has signed up for the Brand Registry, Amazon provides text and image search tools to help the owner identify and remove infringing and counterfeit listings. Complaints filed through the Brand Registry should also lead to permanent suspension of unauthorized seller accounts more quickly.
Facebook has introduced its Commerce & Ads IP Tool to assist brand owners in monitoring the Facebook Marketplace and use of their trademarks in Facebook ads. Registered users of Facebook’s tool are able to search Facebook across all ads and Marketplace listings, not just those that might appear in their own feed or local area, to identify unauthorized, infringing, and counterfeit uses of their registered trademarks and other intellectual property.
However, both platforms have a major limitation – not only do they restrict participation to brand owners with registered trademark rights, ignoring common law protections that may exist, but both Amazon and Facebook only allow brand owners to sign up with their monitoring platforms if they possess a “standard character” or “word mark” trademark registration. Neither Brand Registry nor Facebook’s Commerce & Ads IP Tool accept registrations for stylized marks, even those that include a word or phrase that is separately registered as a standard-character mark.
For brand owners without registered rights in standard-character marks, Amazon and Facebook will continue to accept complaints, but response times are typically slower and brand owners will lack access to the additional search and monitoring tools offered to registered users of the Brand Registry or Commerce & Ads IP Tool.
Given these limitations, any owners who have not yet secured a standard-character registration of their trademarks but wish to take advantage of the enhanced enforcement tools now offered by both Facebook and Amazon should consider filing trademark applications for their word marks.