Selling a Brand Where the Brand Owner refuses to Trademark Their Name

I have been selling products for a company for many years. Many are really good sellers. For their own reasons, they are unwilling to register a trademark for the brand name so I can’t set up brand registry for them.

I made the mistake of listing the Brand as “Generic” when I set them up because they were not in Brand Registery. (My fault) Now amazon is cracking down on Generic as a brand. I am unable to make any changes to one of my products now due to a 8572 error.

I am back and forthing with seller support right now. What I have realized is that, eventually, I will lose ability to edit any of the products because Amazon won’t remove the “generic” brand.

If these were little sellers I would just stop selling them, but several of the items do bring in decent sales.

In order to relist the products, which is necessary to get rid of the “Generic” brand, the products need new UPC codes and the products will need to be relisted.

I have to broach the UPC issue with the manufacturer, but my question is:

Will I be able to list the products, if the company is not part of the Brand Registry?

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I believe you will be fine listing a brand that is not in Brand Registry. You just won’t be able to do much about counterfeiters etc.

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The Brand probably has a common-law trademark which can be successfully defended and needs no registrations in the real world.

Amazon prefers to ignore common-law trademarks, since they cannot be handled by bots.

A legal action in defense of the trademark might motivate Amazon to recognize it.

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Well, if there’s no registration, then it’s a “he said she said” situation, which cannot be arbitrated anywhere outside of a court setting.

For example, I could claim the trademark was mine prior to them using it, and because neither of us have a registration, the case would have to go to court where evidence would be submitted as to who really used it first.

The real risk here is if these products are a good seller, someone else will register the trademark, make it themselves and take over the listing and brand registry, and then file infringement claims on all other sellers. The only way to stop that from happening would require the current manufacturer to object to their trademark filing (if they don’t do so they would likely lose all rights to it).

If the product is easily copied the likelihood of it happening is high, as Amazon won’t give them any enforcement rights, and from a legal perspective there’s very little risk as a company that couldn’t be bothered to spend a little money to file a trademark is unlikely to spend 500K to bring a lawsuit over it. If I got a C&D from a company with no registration/pending registration I would ignore that in a second.

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Have you tried getting the brand recognized by Amazon using the error 5665 method?

Error 5665

This method gets the brand recognized by Amazon but does not get it in brand registry. The key will be the images of the products that will need to be submitted. They need to be “real world” images which is simply images taken with a cell phone of the item in your hand or on a table.

Review the video in the link above and then come back and ask any questions you have prior to starting the process as it might save you some time.

Note

We used this method prior to having our brand USPTO registered.

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Thanks so much for that link. That was an enlightening video. Unfortunately, the already listed products have the brand Generic, and seller support is telling me I am SOL where those listings are concerned. I believe I will need the brand to put new UPC codes on the product before I could attempt to list them again. If I can convince them to replace the UPC codes, I will definitely be back to get more details before I attempt to set up the new listings.

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Thanks for that very valid and probable outcome. I’m passing this on to the brand owner. Considering how slimey some sellers are on Amazon, I could see it happening.

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If I can’t get them to pay the money to register the trademark, I am pretty sure they won’t spend the money for a legal action.

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They probably won’t, because a case to defend an unregistered trademark will cost many multiples more than one to defend a registered one, and the probability of winning is lower than if it’s properly registered, and any damages will likely be much lower as it’s impossible to prove they willfully violated the trademark when the existence of it is questionable to begin with.

Just to sum up and clarify, @JustMe123

  • A brand does not have to participate in Amazon’s Brand Registry program to list products on Amazon.
  • A brand does not have to be trademarked or officially registered with USPTO to have the same legal protections as registered brands against intellectual property theft or abuse.
  • Both registered and unregistered brands must use legal means to protect their IP. It is not necessarily significantly more time consuming or expensive to defend a non-registered trademark, but each case is different.
  • Amazon will not intervene in IP disputes for brands that are not part of Brand Registry–and there’s some disagreement on how useful BR is, anyway.
  • With GTINs (UPCs), you can relist these products as branded items on new ASINs, but you will lose reviews and sales rank.
  • You might be able to use a GTIN exemption to list these products as new branded ASINs without UPCs, but again, you’ll lose reviews and ranks.
  • If the brand does decide to get official UPCs, it will be important that they link each product to a UPC in the database–before you relist on Amazon–and that the brand and UPC are on product packaging, clearly visible in images.

Now, my question–is there no possible way to get these generic listings corrected to the brand shown in images?

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I will be running into a similar issue myself in the near future.

Its my plan to list the product again with the appropriate brand, then request the duplicate listing to be merged with the new one. Hopefully, saving the reviews in the process.

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Since you are making money off their brand, have you considered paying for the TM to protect YOUR cash flow from their product?

Of course, before I were to do that I would want as iron clad of an agreement as possible that YOU would be the exclusive authorized seller on Amazon and possibly other sites.

I might also try to get the right of first refusal if they ever decide to sell or shut down the brand!

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Actually, given that it seems like the brand owner doesn’t care about protecting their IP, he could just register the trademark, and when it’s not objected to, he’ll become the legal brand owner.

And then the listing confusion begins when Amazon checks USPTO trademark ownership against GS1 UPC ownership … and the listing problems begin …

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Which brings up the question about the brand owner being so unconcerned.

I have to think they DO NOT have GS1 numbers and it’s only a matter of time before they can’t even get listed anyway without an exemption of some sort!

I was concerned about that but the upcs are GS1 and registered to their company so that is a plus.

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In regards to changing from Generic to the brand name, even without Brand Registry, I have to say that for us it was impossible to do.

We spent months talking with Seller (almost)Support, Amazon agencies, whatever… and it was impossible. We had to remove our stock from FBA, create new UPC and relabel all the items.

I hope that you can find a way to do it.

I had considered doing this, but also considered what Lost My Marbles said.

:laughing: I have enough problems with Amazon that aren’t really created by me. I don’t think me purposely trying to make an end run around the situation would end well.

I came to this conclusion and decided to stop trying to get Amazon to help me. New UPC and new labeling is on the cards.

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The brand owner is willing to re UPC and repackage the products so I can create new listings with their brand name instead of Generic. Now I need to figure out how to make it happen.

There are 5 FBA SKUs with the Generic brand in Amazon Warehouses with about a month’s worth of inventory available.

Currently, All SKUs are searchable and available for sale.

What do you think is the best next step?

  1. Just sell through what is there and then close down the listings?
  2. Lower prices to break even to sell through quicker and then close the listing?
  3. Pull all the product back from the warehouses just incase Amazon gets squirrelly and decides to whomp me ferociously for the Generic branding?

What do you think?

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