How to Report an ASIN Infringing on Your Trademark?

Trademarks are infringed on Amazon.com everyday.  It’s your responsibility as a trademark owner to police Amazon.com and ask that ASINs infringing on your trademark be taken down.  They can undermine your brand’s reputation, confuse customers, and most importantly make you lose a sale. This guide walks you through an analysis of trademark infringement, saving critical evidence, and effectively submitting a complaint to Amazon.

Read more about Amazon’s IP Complaint process including for patent infringement and copyright infringement.

Step 1: Should you take action?

In my practice, I often help clients navigate the complexities of trademark infringement and guide them through deciding whether to take action against an infringer. This decision requires a careful balance between immediate enforcement and a more strategic, patient approach.

Interestingly, about 20% of small businesses fail within the first year, and nearly 50% fail within five years (U.S. Bureau of Labor Statistics, 2023). Because of this high failure rate, taking no immediate action often allows the problem to resolve itself without any intervention or expense on your part. This approach avoids spending unnecessary time and resources pursuing infringers who are likely to disappear on their own.

On the other hand, allowing an infringer to operate unchecked comes with risks. If their business succeeds and begins generating significant revenue, they will have more resources—and motivation—to resist your demands to stop. Once they are profitable, asking them to cease operations means asking them to give up something of value, such as their profits or market share. This can make enforcement more challenging and expensive.

When deciding whether to act, it’s crucial to weigh the costs of enforcement against the potential risks of waiting. Here are key considerations to help guide your decision:

1. Research the Infringer: Before spending significant money on enforcement, invest time in researching the infringer’s business. Are they a startup with little traction, or do they have an established and growing market presence?
2. Assess Their Financial Viability: If they appear to be struggling or just starting out, patience may be the better strategy. If they are thriving or expanding, earlier enforcement might prevent greater challenges down the road.

Step 2: Confirm Trademark Infringement

Before filing a trademark complaint with Amazon, ensure the ASIN is clearly infringing on your trademark. Ask yourself: Is this a straightforward case of trademark infringement, or is it debatable? If it is debatable, then its harder for Amazon to make a decision and they’d rather leave the listing up.  Amazon doesn’t want to be a judge in these cases.  Hence, they rely on clear evidence of violations, not subjective or unclear claims.

Amazon’s role as a platform is to provide a marketplace for sellers to list their products. If they took down every ASIN based on a vague or unsupported complaint, it would disrupt their operations and the trust of their sellers. At the same time, Amazon wants to protect its customers from confusion caused by trademark violations. To balance these priorities, you need to provide clear, objective evidence when you do take action.

When evaluating whether to file a complaint, consider the following:

• Is there clear evidence of infringement? For example, is your trademark being used without authorization in product titles, images, or descriptions?
• Does the infringement likely cause customer confusion? Can customers mistakenly believe the product is associated with your brand?
• Is the complaint based on factual trademark rights? Ensure the issue is tied to your registered trademark and not a subjective dispute.

By preparing a well-supported complaint with clear evidence, you improve the likelihood that Amazon will take action to address the issue while protecting its platform from unnecessary disruptions.

How to Analyze the Case?

Compare the Respective Marks:

The infringing mark shown in the ASIN should be substantially similar, if not identical, to your registered trademark. A critical factor to consider is whether your registered mark is a design mark or a standard character mark. This distinction significantly impacts how the comparison is made and whether infringement can be established.

If your trademark is a design mark, the comparison is not between the text shown in the ASIN and the words of your registered trademark. Instead, the comparison is between the visual design of the mark displayed in the ASIN and the design of your registered mark. For instance, in In re Viterra Inc., 671 F.3d 1358 (Fed. Cir. 2012), the court emphasized that design elements play a key role in determining the overall commercial impression of a mark. If the ASIN uses a mark with a significantly different design, such that the commercial impression differs from that of your registered design mark, then there may be no likelihood of confusion.

On the other hand, if your registered trademark is a standard character mark, the comparison is made between the textual elements of your trademark and the textual elements used in the ASIN—irrespective of design. This broad protection is why standard character marks are often preferred.

Minor differences in design can make it more difficult to establish a claim for infringement. For instance, if a registered design mark incorporates intricate visual elements, an infringing mark with even slight variations could create a different commercial impression. Since Amazon’s customer service team is not equipped to make nuanced judgments about trademark infringement, presenting clear and indisputable evidence is critical. Ambiguous claims, especially those involving subtle design differences, are less likely to succeed.

Compare the Respective Goods :

• • The goods associated with the infringing ASIN must be substantially similar, if not identical, to the goods listed under your trademark registration.
  • Once again, Amazon doesn’t want to guess whether or not the respective goods are similar. They don’t want to make judgment calls.

If the marks and goods are clearly similar, you have a strong case. If not, you may be asking Amazon to make a judgment call, which is unlikely to succeed.

Step 2: Save the Infringing Data

Once you notify Amazon, the infringer may delete the incriminating evidence.  As such, save the data such as screen shots before you notify Amazon.

Once you notify Amazon of a potential trademark infringement, they will alert the owner of the ASIN. Often, the ASIN owner will quickly alter the listing to remove the infringing elements. If this happens, you might lose access to the data needed to prove your case.  Hence, take screen shots and save the data before you inform Amazon.

Why Saving Evidence Is Critical?

• Preserve Original Data: If the ASIN is modified or removed, you won’t be able to retrieve the evidence of infringement.
• Strengthen Your Case: Providing Amazon with clear, unaltered data makes it easier for them to confirm the violation and take action.

What to Save

1. Screenshots:
   • The infringing ASIN listing, including product title, images, and descriptions.
   • The ASIN number and URL.
   • Youtube videos if any.
2. Test Purchases (If needed):
   • Order the infringing product to confirm unauthorized use of your trademark.
   • Document the unboxing process, noting any counterfeit or unauthorized branding.
   • Save receipts and order confirmations as supporting evidence.

Step 3: Submit the Data

When submitting your complaint, remember that Amazon Seller Support handles a wide range of issues and is not staffed by trademark attorneys. Your goal is to make the data clear, concise, and easy to understand so that there is no doubt as to trademark infringement.

How to Present Your Data

1. Use Side-by-Side Comparisons:
   • Show your trademarked content next to the infringing ASIN details.
   • Label each comparison clearly (e.g., “Unauthorized use of ‘BrandName’ in product title”).
2. Be Direct and Concise:
   • Avoid extensive legal jargon or lengthy explanations.
   • Example: “The ASIN uses our registered trademark ‘BrandName’ in the product title and description without authorization. See the attached comparison.”
3. Include All Necessary Information:
   • Trademark registration number and jurisdiction.
   • URLs and ASINs of the infringing listings.
   • Supporting documentation, such as screenshots and test purchase details.

Where to File Your Complaint

1. Amazon Brand Registry (Preferred):
   • If your brand is enrolled, use the Report a Violation tool.
   • Log in at brandservices.amazon.com and upload your evidence.
2. Public Report Infringement Form:
   • If not enrolled in Brand Registry, use Amazon’s public form: amazon.com/report/infringement.
   • Attach all supporting evidence and submit the form for review.

Need help?

If you’re facing potential trademark infringement on Amazon or want to ensure your trademarks are properly protected, don’t hesitate to call me at (949) 433-0900 or to schedule a consultation. I can help you evaluate your options, understand the nuances of your trademark registration, and craft a strategy that safeguards your brand. Contact me today to schedule a consultation and take the first step toward resolving your trademark concerns with confidence.