It is important for Amazon sellers to protect their private label brands on the Amazon platform. In the past, we have written about the importance of trademark protection as well as other ways to combat listing and product hijackers (link to article). However, it is also important to consider the “distinctiveness” or “strength” of your trademark. If a trademark is not “inherently distinctive” it can be difficult, or even impossible to gain protection. Keep reading to find out how Amazon sellers can create the most distinctive trademarks for their private label products.
What is Distinctiveness?
In the law of trademarks, distinctiveness is a strength. Trademarks are ranked on the scale of distinctiveness and strength based upon how inventive they are. The most inventive and the most readily protectable trademarks are called fanciful marks. These trademarks are made up of entirely imaginary words or images. For example, Kodak is a fanciful mark. Before Kodak was applied to photography related goods, it had no meaning at all, whether in relation to photography or otherwise. Essentially, fanciful marks have no dictionary definition.
Slightly less inventive than fanciful trademarks are arbitrary trademarks. Arbitrary marks consist of words or images with some dictionary meaning, but no meaning connected with the goods sold under that name. For example, Salty would be an arbitrary mark if it were used in refrigerators. Before the word “salty” was applied to refrigerators, it referred to a type of seasoning but had no connection with refrigerators.
Next on the scale of distinctiveness is suggestive trademarks. These types of marks suggest, rather than describe the type of goods covered by the trademark. For example, think of the mark Salty, this time used in connection with sailing gear. Salty is suggestive of boating/sailing, but it requires a leap of imagination to make the connection.
Inherent Distinctiveness
Ideally, Amazon sellers with private labels should select a trademark which is “inherently distinctive.” A fanciful, arbitrary, or suggestive term is considered “inherently distinctive” and can be protected as a trademark without any proof of “acquired distinctiveness” (also known as “secondary meaning”). To assess whether a trademark is “inherently distinctive” is to imagine it being used for goods and ask yourself whether a consumer seeing it for the first time would recognize the mark as an indicator of the source of the goods. If so, the mark is distinctive. If on the other hand, the consumer would think that mark is informing her about some other characteristic of the good (like whether they are delicious, spicy, black, etc.), then the mark is not inherently distinctive.
Why Should Amazon Sellers Care about Distinctiveness?
There are two categories of trademarks which are not considered “inherently distinctive:” (1) Suggestive marks; and (2) Generic Marks. Descriptive terms are primarily used to describe goods or services and can only be protected under certain circumstances and if it can be shown the trademark acquired secondary meaning.
Generic marks fall off the distinctive scale entirely. Generic trademarks are nothing more than the common name of the goods or services in connection which they are used. A generic trademark would be the equivalent of the mark Salt used in connection with actual table salt. Generic marks can never acquire trademark protection as it cannot serve the trademark function (identifying the source of goods).
If a mark is not inherently distinctive, many difficulties will arise in the trademark application process. An Amazon Seller will not be able to obtain registration of the trademark rights unless the company can prove that the mark has “acquired distinctiveness” through actual use. This is typically expensive, and sometimes even impossible to prove. However, if the mark were inherently distinctive, the Amazon seller would not bear this burden.
Difficulties can often arise in the litigation context if a trademark is not inherently distinctive as well. If you are involved in an intellectual property claim in court, an Amazon Seller will not be considered to have any rights to the trademark unless they can prove that the mark has “acquired distinctiveness.” Once again, this can be expensive or impossible to prove, and if the mark were inherently distinctive, the seller would bear no such burden.
How can Amazon Sellers Lawyer help?
Rosenbaum Famularo, P.C., the law firm behind AmazonSellersLawyer.com, has assisted many sellers in the trademark application process with the United States Patent and Trademark Office (USPTO). Our firm can provide an analysis of the strength of your mark, including an evaluation of whether it is inherently distinctive. We also will conduct in-depth searches of the USPTO databases to ensure that no similar trademarks exist and/or conflict with those of our Amazon Seller clients. When it is determined that the mark is inherently distinctive and no conflicts exist, we then navigate the application process on behalf of our clients from start to finish.
Takeaways for Amazon Sellers
Amazon sellers who conduct the sale of their own private label brand products are often victims of listing hijackers and intellectual property infringers. Registering for trademark protection with the USPTO is an important step in policing a Seller’s brand on the Amazon platform. By doing so, Amazon Sellers gain the right to report any seller impermissibly selling their product on the Amazon platform for intellectual property infringement. However, as Sellers are now aware, choosing a mark that is inherently distinctive can be essential to gaining the protection of a trademark. For more information about trademarks and brand protection, visit our blog at AmazonSellersLawyer.com.
