In a prospering yet cutthroat marketplace like Amazon, protecting yourself legally (and avoiding infringement on others’ intellectual property) is a confusing yet important step to navigate.
Fortunately, we had Marc Karish join us for Session #4 of the Million Dollar Case study. Marc is a patent attorney with over 15 years of experience working in intellectual property law. He did a great job laying out the fundamentals of intellectual property to help guide us through potential pitfalls, whilst also protecting ourselves legally.
Here is a full recap of the video:
And the slides that Marc reviewed:
Note: Marc did not give specific advice. As the nature of intellectual property law can get very specific, this session serves as an overview, but is not in itself legal advice. Alright, now that that disclaimer is done, let’s get to it!
There are three components of Intellectual Property, which were covered individually: Trademark, Copyright, and Patents.
Taking the definition from the US Patent And Trademark Office (USPTO):
“A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others.”
Essentially, Trademarks exist to protect the marketplace, so consumers can identify where the product comes from, so people can’t sell products using identical marks.
Trademarks can exist in some of the following ways:
- Words – Apple, Nike, Adidas, Exxon
- Letters – AAA
- Slogans – “Just do it”
Additionally, there can be a combination of visual elements, combining a word and symbol mark, like “White Elephant”:
Trademarks can also come in the form of Trade Dress, which is a product shape that has been used long enough that people have come to associate that shape with that company. A signature example of is the Coca-Cola bottle, which is a very distinctive and recognizable shape:
How do you research an existing trademark?
Simply head to the USPTO.GOV site, and search in the Trademark Electronic Search System (TESS):
From here, you can search using various methods; using basic design marks, ownership, word or design marks. When you are searching for trademarks, you want to make sure that your trademark is not going to be too similar to cause confusion.
Questions that you want to ask yourself are:
- How similar does my brand look to the existing trademark?
- Do they sound similar?
- How similar are the products in price or function?
If you are going to adopt a new trademark for your product, you are going to want to ensure someone’s not using the similar sound and function, as that could mean that you are infringing on an existing trademark.
An interesting caveat that Marc mentioned is that some trademarks are registered with the states (and therefore won’t be found on USPTO.GOV, or aren’t even registered at all, but have been used long enough that they can be enforced against you if needed. If it comes to such a state of ambiguity, it’s always safe to heed the advice, ‘consult with an attorney.’
The government uses the following definition:
“Copyright is a form of protection provided by the laws of the United States. (title 17, U. S.Code) to the authors of ‘original works of authorship,’ including. literary, dramatic, musical, artistic, and certain other intellectual works.”
This means that the photos, graphics, text, and other creative work used in the product, packaging, or website is protected by copyright.
This gets tricky with selling on Amazon, as there are many products and listings that look nearly identical. However, if you copy some packaging or a manual, you are violating copyright law. Moreover, if you are inspired by someone’s product, they automatically have protection on the images, language, and packaging.
If you violate an existing copyright, the rightful copyright owner can go after you, and does not necessarily need to register everything in order to enforce copyright laws.
The good news…
Once granted, a copyright lasts a long time. In general, it is the life of the author plus at least 70 years.
The good news about copyright infringement is that it is fairly easy to avoid. Don’t copy someone else’s work! If you created it, whether the image, text or graphics, you will be OK.
An important note for those who have employees: if you have someone else produce the copy for you, under contract, make sure to have written an assignment of all copyrights to you so that down the road you are not accused of copyright infringement. This is very simple to execute. But make sure that you get it in writing to avoid issues down the line.
Patents protect the idea behind the product. By definition:
“A patent for an invention is the grant of a property right to the inventor. Patents are granted for new, useful and non-obvious inventions for a period of 20 years from the filing date of a patent application, and provide the right to exclude others from exploiting the invention during that period.”
The notion behind patents is that in exchange for sharing the useful, non-obvious invention, patent owners are granted a monopoly for a given amount of time.
The benefit of a patent is that it grants patent owners exclusive rights to sell a product for a set amount of time. Therefore, the inventor gets market share, profit margin, and marketing benefit during the life of the patent.
Patents have a term from 17 years of issuance or 20 years from filing, to be safe you will just assume the longer of the two. There are two types of patents: utility patents, and design patents.
Utility Patents protect the function or feature of the product.
A utility patent is defined by the “Claims” at the end of the patent, which defines what is protected and covered by the patent. Several things have to be included in order to avoid infringement.
For example, here are the claims of a patent for a “baby hooded towel” found on Google Patents search:
In order to be held in violation of a patent, you have to have all of the elements of one claim. However, if your product does not infringe on every element of a single claim, you may not be infringing. Again, it is best to consult an attorney to review the fine details here. This is especially the case if it is hard to interpret or understand the patent, and you need help deciphering the legal language.
Design Patents are intended to protect the appearance of the product. Marc suggests that Design Patents are frequently obtained for automotive parts, shoe designs, but not exclusive to this use case. They are much more specific and easier for people to get. To “design around” these patents, you more or less just need a design that doesn’t look like the patented design. However, it would be OK if the product served the same purpose.
How do you do patent research?
The best place to start your patent research is by checking for the patent number on the product, packaging, or website. From there, you can investigate on USPTO.GOV or Google Patents, searching for the name of the company, assignee, or inventor.
However, remember that there are limits and nuances to a self-conducted patent search if you are not a patent or intellectual property attorney.
How much does this legal protection cost?
- Copyrights – Filing a copyright registration is inexpensive. The fees run $35-$55 on Copyright.gov, and might be $250-$500 if you hire an attorney to do it.
- Trademarks – Filing a trademark can run about $1000, which includes the filing fee for one class of goods.
- Searching for a patent and conducting patent research could run $2000-$3000. Depending on the technology that is being patented, and the research necessary.
- Filing a patent – This can cost $7500 to $9000! Plus 50-100% of filing cost to get it past for applying for a patent. Additional fees may include additional applications and drawings that need to be done to file the patent.
The key takeaway:
Above are the steps to get you started with your IP research. However, if you have specific questions on your particular product or idea, it is best to reach out to an intellectual property attorney. Marc’s contact info can be found on his firm’s website here.
I hope that this recap was helpful. This is very nuanced content, so if you get a chance to watch the full video recap, you can hear exactly what Marc said!
Don’t forget to check out the next Session (#5) of the Million Dollar Case Study. Greg gives you an over-the-shoulder rundown of outreach to suppliers on Alibaba. Find the full recap and replay here.
Hello JS Crew,
Thank you for all the great content. Really really helpful.
I have a question about regulatory requirements for the baby hooded towel. Did you have to apply for a safety certificate from CPSC or get the product tested by ASTM before going live with the product (let’s say for dyes used on the product etc.)? I am working on a product in the baby category and wanted to get a sense of the groundwork before I can go to market with the product.
Once again, thank you for providing so much value with all the content you guys produce.
I am not sure of the particular certificates we got for the product but we do use Asiainspection for our lab tests and also inspections prior to shipping. They also have a really great team who will send you a list of required and recommended test certificates for any given product / marketplace. You can also speak with your Freight Forwarder to see if they have any particular advice on documents needed to pass customs.
A little of your own research never goes amiss, also. Ultimately we always just go for any certificates that are a definite requirement, and some higher risk categories, some of the recommended ones too.
Hope this helps,
Excellent educational blog + video!!! Loved it. However, still lots of questions.
What if I found a product which sells good on Amazon and only one different shape is sold by one seller. The seller who is selling this shape claims that this is his/her design, however, I checked google trends based on video and no trend mark, nothing showed up there. Neither design pattern, nor utility pattern was found.
But in Alibaba lots of suppliers are selling the same shape and ready to sell it to me too. I am thinking to change the size a little bit which will even improve the shape and sell it on Amazon.
Do you think this a good idea? Who has the same experience ?
The main question is if you dont find any patent issued for specific shape can we just move on?
What if the seller in fact designed it but didnt patented the shape?
Thanks a lot in advance!!!!
This case study should be in universities curriculum!!! 🙂
If you can’t find any trademarks or patents then it’s possible that they did design the product shape, but have not got a patent for this. It could also be possible that they have applied for one but it has not been processed and approved yet…
Unfortunately, without seeking professional advice to do some investigating on your behalf, there is no real way to be certain.
If there are lots of suppliers on Alibaba selling the same shape, then that could indicate that this one seller may just be making false claims in their listing.
It’s up to you whether you are willing to take that risk, or if you want to get a professional second opinion before you move forward.
In looking at the ‘legal protection costs’ I’m feeling a bit overwhelmed. I was thinking about getting an investment to start my FBA, but if it’s going to cost 15k+ just for the legal end of things…that makes me really uncomfortable! Lol. Will all of the ‘legal protection costs’ be needed? Can one get away with selling a product and only having a copyright? Or a Trademark? Or does everyone HAVE to have a Copyright, Trademark, and patent to start an FBA? Really appreciate your response. I was just thinking starting this business would be a couple grand investment, but if it’s going to be upwards of 20k…I definitely want to know before I get started!
The truth of the matter is that most FBA sellers launch without copyright, trademarks and patents. The process which we outline in this case study is one which helps you to find a product idea with high demand and low competition, and then how to source, import and sell it. These products are always existing products and our advise to new sellers is to find a way to improve that product, then add your own brand name and sell as a private label FBA seller.
The reason Intellectual Property Research is bought up at this early stage is that you want to ensure that you aren’t manufacturing a product that already has a patent, which would cause you a lot of problems down the line. You do not need to have a trademark to get started, but it is now a requirement if you want to enter Brand Registry later on down the line. So this is one more intellectual property consideration in the early stages… if you want to apply for a trademark then you need to come up with a brand name for your product(s) that is available.
The main things that you will invest in up front to launch an FBA business are:
– Cost of goods (ordering your inventory)
– Shipping and importing costs
– Photography / Design costs if you hire a professional
– Your Seller Central account subscription
– A barcode for your product
Hope this makes sense Tara – try not to get too hung up on these things as you absolutely do NOT need them to launch an FBA business. You just need to ensure due diligence that you are not infringing any other patents 🙂
I have a question regarding a combination of trade dress and partial name inclusion. In some ways, it relates to Joe’s comment above. I would use part of an existing trademarked name such as Jungle instead of fully, Jungle Creations.
Here’s the confusing part though. Part of the tentative logo would include shapes that the existing brand is well known for. But the product I would sell is not the same product being represented in those shapes. But they would be utilised together. I can’t be too specific without giving my product idea way.
I think trade dress is rather absurd. How can a company get away with trademarking a shape like a rectangle with rounded corners….?
Thanks for your feedback!
Unfortunately I am no trademark expert and we can’t give any advice on legal matters like this.
It sounds to me, though, like you have some reservations about your logo in that it might infringe on someone else’s intellectual property. If that’s the case I would probably advise to perhaps use different shapes or a different logo? Or at the very least, seek professional advise on the matter before submitting your application, otherwise it could be costly for you.
A question about trademarks.
Let’s say I was considering the parent brand name “Jungle Creations” and found out that it was not being used by anyones else, but there were other brands involving the word “Jungle” such as: “Jungle”, “Jungle bicycles”, “Jungle energy” etc. Would I be able to create a child brand name for my product using “Jungle” e.g. “Jungle garlic presses”? Or would the using of “Jungle” be copying someone else’s trademark?
While I am not a lawyer, from my recollection taking some classes on this, you would not be in violation of any infringement because it is not the same application or use case. Again, obviously you want to double check that with someone who has the legal background!
Thanks for the great content. I’m interested in finding out the best way to protect my designs so they won’t be duplicated or offered to other buyers by the manufacturer I am working with. Do you recommend some type of intellectual property agreement?
Thanks again, Monica
Thanks for reading 🙂
Assuming you mean for your product logos and designs and not the physical product itself, I would recommend applying for a registered trademark and joining the new Amazon Brand Registry. You can find out more about this here!
Hey guys, this was great information! I appreciate all the helpful content you give us every week!
Hey Guys, I’m really enjoying the education.
How do I protect against prospective factories stealing my idea when I send them a RFQ?
Thank you kindly,
Hey how can you tell the patent was expired? I saw the hooded baby towels in JS about a year ago but moved on when I saw the patent in google? Also would you consider a product with a patent pending?
I keep running into these types of issues in my research. thank you
I think you should be able to find the expiration of the patent while searching for the patent. I believe there was a point in the webinar where Marc did this. And I believe Marc also noted that patent pending should not necessarily be a dealbreaker. Hope this helps.
Interesting – doing a quick search on magnetic blocks and baby hooded towel shows that they have patents on them. Are you aware Greg/Gen?
Looks like the baby hooded towel patent is expired so we should be good to go 🙂
will today be the next case study #%
Yes, we will have Session #5 today at 5p PT, Greg will share the udpates of his interactions with suppliers. If you have not registered for the webinars before, you will get an email with the URL to join, otherwise just register for free here: https://www.junglescout.com/the-million-dollar-case-study-overview/
hope you can make it!