The Amazon Marketplace, an online sales platform for third-party sellers, has seen a significant increase in popularity. It is not, however, the only third-party sales platform, Walmart.com, e-Bay, and Etsy are other popular marketplaces in the U.S., and all offer great ways for international sellers to enter the U.S. market. There are, however, some IP considerations international sellers should consider before selling on these marketplaces.
Clients should assess and consider whether their products contain patentable subject matter. There are significant advantages to filing patents in the U.S., especially if one is considering selling on a marketplace in the U.S. Clients can take advantage of the available treaties and claim priority to any international patent applications they may have already filed. There are strict deadlines on when one can file (e.g., one has only twelve months for the international filing date to file in the U.S. for utility applications and six months for design patents), so be sure to discuss early with clients.
Another consideration for patents is the product packaging. With shipping being an important aspect to selling on these marketplaces, any advantage or benefit your client’s packaging provides may provide the appropriate incentive to file. Clients should be encouraged to investigate whether any patents can be filed on the packaging, including design patents. This is another way of differentiating one’s products from others.
Upon entry into the U.S. markets, you should consider encouraging your clients to file trademark applications for their brands. These trademark applications may be filed based on a trademark application filed in another country or a registration from another country. The international application or registration may provide a filing basis for the U.S. trademark application in addition to actual use or intent to use bases also available in the U.S. Further still, the Madrid Protocol is also a powerful and cost-effective tool to use in filing a trademark applications in multiple jurisdictions. U.S. trademark attorneys can help develop an appropriate filing strategy.
Having a strong trademark strategy is important because many of the marketplaces have trademark enforcement mechanism that can help protect your client’s trademarks. For example, Amazon utilizes a brand registry to help sellers with enforcement of their trademarks. One important consideration of this program is that it requires that the trademark to be enforced on the Principal Register in the U.S. Therefore, it is important to take advantage of these programs where the registrations are on the Principal Register as opposed to the Supplemental Register. The easiest way to ensure that marks get on the Principal Register is to ensure the marks are not descriptive or generic. Be sure to work with U.S. counsel to help improve the likelihood of the marks ending up on the Principal as opposed to the Supplemental Register.
If your client’s products comprise some artistic component (e.g., photos, drawings, or the like), you may want to consider filing a copyright application for these artistic components. Further, if your client sells furniture you may also want to consider copyright protection for the product. Because copyright protection, however, is not as broad as patent protection, including design patents, copyrights should not be a replacement for patent protection. You may want to consider it as a supplement to patent protection. One particularly useful reason to file for copyright protection is that it will allow for recovery of statutory damages for infringement.
One last thing to consider is to conduct both trademark and patent clearance searches to ensure that the branding of your client’s products and the products themselves do not infringe on any third party’s U.S. patent or trademark rights. U.S. IP attorneys can help with developing a cost effective and comprehensive search strategy.
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