Dyan Finguerra-DuCharme, a partner at law firm Pryor Cashman who specializes in intellectual property, including trademarks, says it’s happened to her clients.
“[The counterfeiters] file a document with the trademark office that says, ‘Our email address has changed.’ Then they go over to the Amazon brand registry and they say, ‘We’re the owner of this mark.’ And they give their email,” she said. “Amazon then looks at the USPTO records and confirms the email. At that point Amazon gives them access to all of their tools, as the rightful brand owner. With access to those tools, they can take down legitimate product. And they can ensure that their own counterfeit product is sold on Amazon.”
Amazon’s Brand Registry is designed to help brands protect their “intellectual property and create a trusted experience for customers on Amazon,” according to the program’s website.
“Amazon’s proactive technologies and services for protecting brands, including Brand Registry, are increasingly effective. As a result, bad actors are attempting to find new ways to abuse our protections. We are working closely with brands, the USPTO, and others to continue to strengthen our protections and stay ahead of these bad actors,” said an Amazon spokesperson in an email. The company declined to provide any more details on its Brand Registry program.
Amazon said it strictly prohibits the sale of counterfeit products.
“We also work closely with vendors, sellers, and rights owners to strengthen protections for their brands on Amazon,” the spokesperson said in part. “We remove suspected counterfeit items as we become aware of them, and we permanently remove bad actors from selling on Amazon.”
When the USPTO receives a change of address for an email on a trademark, they send out an email to the old address to confirm, according to Finguerra-DuCharme.
There are no stats on how many times the scheme has happened, since it is relatively new. “For my clients alone, I’ve received about 12 or 15 of these email alerts,” she said.