Fair Use of Someone Else’s Trademark
Hello all,
I hope everyone is having a great week! 😄
We've recently seen sellers report cases of trademark infringement, which may qualify as an exception to Amazon's intellectual property policy, as below:
As per Amazon intellectual property policy, sellers can use someone else’s trademark in the following circumstances:
• When selling authentic goods, a seller may use a trademarked name to list those authentic goods. For example, a seller who lists an authentic “Pinzon” product is not necessarily infringing on the owner of the Pinzon trademark because the seller is using the trademark to identify an authentic product.
• When using a trademarked word in its ordinary dictionary, descriptive meaning.
• When selling authentic goods that can be customized by the buyer (that is, print-on-demand) using the seller’s own equipment. For example, a seller prints a custom, personalized message or picture on an authentic “Callaway” golf ball.
I'm working on each of your specific call-outs in different threads.
I want to use this discussion exclusively for educational purposes.
How would you explain use of someone else’s trademark policy exemption to the seller who decides to start selling on Amazon?
Feel free to provide examples!
Waiting for your advise 🤓
Thanks,
Lucre_Amazon
Fair Use of Someone Else’s Trademark
Hello all,
I hope everyone is having a great week! 😄
We've recently seen sellers report cases of trademark infringement, which may qualify as an exception to Amazon's intellectual property policy, as below:
As per Amazon intellectual property policy, sellers can use someone else’s trademark in the following circumstances:
• When selling authentic goods, a seller may use a trademarked name to list those authentic goods. For example, a seller who lists an authentic “Pinzon” product is not necessarily infringing on the owner of the Pinzon trademark because the seller is using the trademark to identify an authentic product.
• When using a trademarked word in its ordinary dictionary, descriptive meaning.
• When selling authentic goods that can be customized by the buyer (that is, print-on-demand) using the seller’s own equipment. For example, a seller prints a custom, personalized message or picture on an authentic “Callaway” golf ball.
I'm working on each of your specific call-outs in different threads.
I want to use this discussion exclusively for educational purposes.
How would you explain use of someone else’s trademark policy exemption to the seller who decides to start selling on Amazon?
Feel free to provide examples!
Waiting for your advise 🤓
Thanks,
Lucre_Amazon
7 replies
Seller_6qFXChUviTdSl
Both a Trademark and Registered trademark can be used IF the trademark is a Design Trademark. For example if a company trademarks their logo and they are called CHAIR, you may find out that the trademark is registered for the DESIGN and NOT the word itself. So if you use the word chair in a sentence and even if it is describing the product it is NOT trademark protected.
However as most individuals do not understand this they end up changing as they think it is unlawful. Hence many products have a name that is not used in regular speech and that is a WORD trademark rather than design.
So ... if you get a cease and desist order for trademark infringement, do the research first to see if you actually infringed upon.
If you want a good example go to the Canadian Trademarks page (Cannot put URL In a message) . NIKE filed 2021-10-22 and the last stage of publishing and waiting if anybody objects was 2024-08-07 in Vol.71 Issue 3641. This is a "Standard Characters" trademark of the NIKE Word. Their original request for the word was filed in 1990 and than abandoned in 1992 as they were unsuccesful.
However in 1996 they reapplied with different statistics and it was published in Jan 1999 and still had some issues after multiple extensions, it was finally Registered in 2001-10-11. So In closing I will use the word SHOE instead of the Registered trademark for that Vendor.
However the Swoosh and the Name and Swoosh are Design Trademarks. So you can use the word swoosh, but NOT the image.
I hope this sheds some light on this topic.
Seller_7LrAV0m5llaI7
@Lucre_Amzn, See case ID 15868135351
Seller support resolve was to misspell the description of the item to get rid of the complaint and violation.
But, now this misrepresents the item, as the listing was correct "When using a trademarked word in its ordinary dictionary, descriptive meaning."
If a seller created a brand named "Black", does that mean Amazon would take down all listings that have the word "Black" in the description?
