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Amazon Sellers know that Amazon’s immense e-commerce platform has tremendous benefits, but they are also all too familiar with its hard-to-navigate downsides.

On the pros side, the Amazon online marketplace is a truly transformative platform in terms of allowing sellers to easily reach and sell their products to a massive global customer base. Product sellers of all sizes and types can successfully market and sell large volumes of their products across the world across numerous product categories.

Third-party sellers began to join Amazon in 1999 and now account for 58% of Amazon sales.[1] Third-party sales on Amazon are a popular avenue for sellers as there are benefits that first-party sellers do not enjoy, such as improved margins through better pricing control, more favorable payment terms and less reliance on the relationship with Amazon.[2] Between 2014 and 2021 Amazon third-party seller services sales have increased from $11.74 billion to $103.37 billion.[3] In 2020 alone, Amazon generated approximately $80.5 billion in third-party seller services, an increase of nearly 50 percent over the previous year.[4] In 2020, more than 200,000 new third-party sellers from around the world began selling on Amazon, a 45% increase from 2019.[5] Globally, independent third-party sellers in Amazon’s stores increased their sales by more than 55% from April 15, 2020, to January 15, 2021.[6] 

Unfortunately, one of the big downsides is that visibility through Amazon also makes it easier for brand competitors to market and sell copycat, counterfeit, or infringing products on Amazon. For sellers, identifying these infringers and enforcing their legal rights against them, especially for those based outside of the U.S., can be a difficult and cost-prohibitive proposition that can feel a lot like a frustrating game of whack-a-mole, even when sellers have intellectual property that is being infringed.

This article reviews the available options for sellers on the Amazon platform to deal with these thorny IP issues and shares some best practices for handling this pernicious problem most efficiently.

The main intellectual property issues that Amazon sellers may run into include:

• Copyright infringement, where a third-party seller is using the copyright owner’s image(s) in its listings of products without authorization.

• Trademark infringement, where a third-party seller is using the trademark owner’s name or brand (or a substantially similar one that creates a likelihood of confusion) without authorization to sell competing products. This frequently occurs when third parties attempt to sell counterfeit goods.

• Patent infringement, where a third-party seller copies and lists for sale their version of a successfully patented product without the patent owner’s permission.

Other issues that could arise include unfair competition, false advertising, counterfeiting, and various “shenanigans” to alter product and category rankings.

This article will focus on the main IP issues listed above.

The Available Options For Sellers Who Believe Their IP Is Being Infringed on the Amazon Platform

Amazon offers several different procedures for IP rights-holders to enforce their intellectual property rights on the platform, which are discussed below.

The Amazon “Report Infringement” Form

The Report Infringement Form can easily be found on Amazon’s Seller Central website and can be used by holders of trademarks, copyrights or patents to notify Amazon of alleged intellectual property infringement.

Only intellectual property rights owners (or their agent) can process complaints through the use of this form. Information that must be reported includes primary complaint type (utility or design patent, copyright or trademark), specific concern, e.g., a design patent, the brand’s name, associated utility patent or trademark registration number or trade name or copyright registration number (or a link to or written description of the copyrighted work), the Amazon Standard Identification Number (ASIN) of allegedly infringing products and an additional informational narrative.[1] Sellers can also use this form to report inappropriate listings, other sellers, policy violations, etc. It should be noted that one limitation to this procedure is that an IP rights owner are limited to 1,000 characters in reporting the alleged infringement and there is no ability to attach additional evidence.[2]

Once the form has been submitted, it’s a bit of a mystery what actually happens, and it is also unclear if there is a different treatment for copyright, trademark or patent claims. The process is pretty opaque. But if Amazon accepts and agrees with the complaint, the reported products will be removed from the marketplace within one to three business days after the form is submitted.[3]

Report a Violation through Amazon’s “Brand Registry”

Amazon’s Brand Registry allows eligible brand owners to take specific, preventative measures to protect their IP.

In order to be eligible for this service, (1) the seller must have an active registered trademark, (2) the trademark for the brand must be in the form of a text-based or image-based mark with words, letters, or numbers, and (3) the trademark must be issued by a government trademark office from select countries.[4] If a seller meets these requirements, they can log in to their Seller Central and enroll their brand in the registry by providing the following information:

• The brand name that has an active registered trademark;
• The associated government-registered trademark number;
• A list of product categories in which the brand should be listed; and
• A list of countries where the brand’s products are manufactured and distributed.

Once this information is submitted, Amazon will reach out to the contact associated with the registered trademark provided in the seller’s application. If and when Amazon confirms that the contact fulfills the enrollment requirements, the contact will receive a verification code, which will then be sent back to Amazon to complete the process.

Once enrolled, a Brand Registry Seller can use the Report a Violation (“RAV”) tool, found on “Seller Central.” Once information is submitted via the RAV on the Brand Registry, Amazon will confirm it is reviewing your notice and will send a follow-up message once the notice has been processed. Amazon will also inform the allegedly infringing sellers about the notice.

Like the “Report Infringement” form, what happens after this is pretty opaque and there is no opportunity to provide further arguments on either side. If Amazon accepts and agrees with a brand owner’s allegations about an intellectual property violation, Amazon will remove the reported content and take action against the responsible sellers.[5] On the other hand, if Amazon rejects the notice, it will not remove the content complained of and will take no further action against the allegedly infringing seller(s).

Utility Patent Neutral Evaluation Procedure (UPNEP)

UPNEP was launched in 2019 as a lower-cost and faster way for holders of utility patents to enforce their intellectual property rights outside of engaging in patent infringement litigation in the district courts.

UPNEP is a confidential procedure and is limited to one assertion of a claim from one unexpired U.S. patent for patent infringement. This procedure can only be used to enforce rights against copycat, counterfeit, and competitive products sold by third-party sellers. Significantly, UPNEP is a voluntary procedure. An accused infringer must voluntarily agree to participate in the evaluation procedure for it to go forward once the patent owner requests to participate in the procedure.

The full process is outlined below:

First, a patent owner requests to participate in UPNEP, typically by sending a letter to Amazon’s Legal department asking Amazon to initiate and allow the patent owner to participate in the process. This letter should (1) identify the relevant patent, (2) identify the allegedly infringing products by ASIN, and (3) describe how the products infringe the patent. It can also be helpful, but not necessary, to include a more thorough patent infringement analysis which may include drawings from the patent, photographs of the infringing products and a description of the damages already sustained by the patent owner and what the continued harm would be if Amazon does not remove the listings of the allegedly infringing products.

Once Amazon receives the patent owner’s initiation request and list of accused products, Amazon sends a neutral patent evaluation agreement to the patent owner and the infringing seller(s). In order to proceed, both the patent owner and the infringing seller(s) must execute the agreement. An infringing seller has three weeks from the date it received the agreement to decide and notify Amazon whether they would like to participate in UPNEP. If an infringing seller agrees to participate, their listing(s) remain active on Amazon until the end of the procedure. If the seller does not execute the agreement or declines to participate in UPNEP, the listings for their accused products are de-listed from Amazon’s marketplace.

If both parties agree to proceed, Amazon selects a neutral third-party patent lawyer, who is not affiliated with Amazon, to conduct the evaluation. At this time, each party is required to pay the evaluator a $4,000 deposit. There can be up to four sellers per evaluation. If there are more than four sellers, concurrent evaluations can be undertaken but the patent owner is responsible for paying an additional evaluation fee.

The evaluator then establishes a schedule for submission of written arguments by the parties where, generally, the patent owner has 21 days to submit its initial arguments, the seller has 14 days to submit its response[6] and the patent owner has seven days to submit an optional reply. The patent owner is limited to 20 pages between its initial arguments and any reply; the seller is limited to 15 pages for its response. There is no discovery, no hearings, and the only issue that can be addressed in the written submissions is the issue of infringement.

The evaluator then has 14 days from the patent owner’s reply to issue their decision. The evaluator must determine whether the patent owner is likely to prove that the accused products infringe the asserted claim(s) in their patent.

The evaluator will only provide an explanation for their decision if they decide in favor of a seller. If it is determined that the patent owner is likely to prove infringement, Amazon will take down the listings for the product. If it is determined that the patent owner is unlikely to be able to prove infringement, Amazon takes no further action, and the accused products remain live on Amazon’s marketplace. The prevailing party is refunded its $4,000 deposit while the losing party’s deposit is retained by the evaluator.[7]  In terms of timing, from initiation of UPNEP to a final decision is said to be a maximum of 91 days.

Notably, the losing party may not file an appeal or request reconsideration. However, if a losing party is unhappy with the outcome of UPNEP, either side may file a federal lawsuit to seek relief.

A patent owner’s participation in and a victory using Amazon’s UPNEP can help down the road if the patent owner identifies new possibly infringing products. Under the right circumstances the patent owner may simply report them to Amazon, without having to initiate the procedure for a second time, and Amazon will make a decision using the prior UPNEP outcome.

Amazon Patent Evaluation Express (APEX)

The newest procedure to help patent-owning sellers combat patent infringement on the platform is the Amazon Patent Evaluation Express (APEX) program.

This tool allows Brand Registered sellers of products with utility patents to report listings that may violate intellectual property. By enrolling in Brand Registry, sellers have access to a dedicated internal Amazon team for submitting and escalating IP infringement claims.

Benefits of utilizing the APEX program (as opposed to other Amazon tools or the court system) include lower costs and faster resolution times. Utility patent disputes handled through [APEX] were decided in an average of 7 weeks, significantly faster than the median time-to-trial of 2.4 years for a U.S. patent lawsuit,[8] while Amazon’s UPNEP can take up to 91 days before entry of a final determination.[9]

The APEX process is quite simple. Sellers concerned about potential intellectual property violations of their utility patents can apply to the APEX program using the Report a Violation tool on the Amazon Brand Registry dashboard. Once submitted, Amazon notifies other sellers connected to ASINs contained in the report so they can decide whether to participate in an evaluation.

In order to participate in the evaluation parties must each pay a $4,000 deposit to the evaluator, who is a neutral third-party IP attorney that is proficient in patent analysis. The evaluator reviews submissions by both parties and determines whether the reported ASINs infringe the at-issue patent. The “winning” seller receives their $4,000 deposit back. If the evaluator determines the reported ASINs infringe the patent, Amazon removes the listings from its website and if the evaluator finds there is no infringement, Amazon takes no further action.

A winning utility patent holder is granted an APEX ID associated with the evaluator’s decision. If a brand needs to report future infringement of the same patent, they can enter the APEX ID in the Report a Violation tool so that the report will be associated with the prior decision.

Strategic Considerations

When deciding which, if any, of the aforementioned procedures is best suited to protect your intellectual property, there are important a few important considerations.

First, an IP owner must consider how strong they think their infringement claim is. While it is always advisable to consult an attorney if you suspect someone is infringing on your IP, the Report Infringement Form and RAV may be better options if the IP owner is unsure how strong their claim is and does not want to (or have the means to) consult a knowledgeable IP attorney, because these two procedures do not require the IP owner to front any costs related to their report(s) of the alleged infringement. UPNEP and APEX require the patent owner to deposit $4,000 with the neutral evaluator at the outset, which may not be returned in the evaluator find that the patent owner is unlikely to be able to prove infringement. Of course, all of these options are significantly less costly than filing a federal IP infringement lawsuit.

Second, it is important to consider the time involved. Any time consideration is not only how long it takes for Amazon, a neutral evaluator, or the court to render a decision on the alleged infringement but also the time to prepare and submit all the necessary information. Again, the Report Infringement Form and RAV procedures require the IP owner to put in significantly less time to collect and compile all the information. These procedures also do not involve any legal brief writing, which not only cuts down on time but also makes the procedures more accessible to a wider group of sellers. UPNEP and APEX provides results within 91 days or less, respectively. Of course, filing a federal lawsuit requires far more time to get to a resolution and far more expense in terms of assembling a case, researching the relevant legal issues, and drafting persuasive pleadings and briefs along the way.

Third, depending on the type of IP, rights-owners may be limited to certain procedures. Report Infringement Form is available to owners of copyright, trademarks and patents. RAV is available to owners of copyright, trademarks and U.S. design and utility patents. UPNEP and APEX are reserved only for owners of U.S. utility patents, however extremely technical utility patents may not be eligible for APEX resolution.

Fourth, and as mentioned above, it is always prudent to seek the advice of counsel in any alleged infringement situation. This is particularly true if you are accused of infringement and are going through UPNEP or APEX because an alleged infringer only has one opportunity to defend themselves and is at risk of losing their ability to ever sell their product again on Amazon. Therefore, legal counsel should be involved to assist in formulating the strongest possible position(s).

Practical Tips for Navigating IP Infringement on the Amazon Platform

In conclusion, we provide a summary and four top-level practical tips and pointers based on our experience on both sides of this issue – for clients who sell on Amazon:

1. Obtain IP that is useful for Amazon platform purposes– design patents, simple “picture claim” utility patents, trademark registrations. Ideally, you want the infringement issue to be straightforward and based on visible, knowable information from examining the accused product.
2. Register your key copyrights and trademarks. Proceeding on registered marks, has the imprimatur of U.S. government approval, and puts the rights holder in a stronger position than relying on common law copyright or trademark rights.
3. For IP rights holders, choose an option for a resolution that balances cost, timing, transparency and the opportunity to make your arguments in a persuasive manner.
4. Although the available Amazon platform procedures discussed herein may be appropriate to use and achieve your objectives, and can be faster and cheaper than litigation, make sure to consider the potential power and leverage created by threatening or proceeding with federal intellectual property lawsuit. That is always an option for patent, copyright, or trademark infringement, and in cases of unfair competition. Depending on the case, the potential damages could be substantial, and none of the Amazon procedures award money damages as a remedy.
5. If you believe you have been incorrectly accused of infringement, it is a good idea to contact a lawyer and – at the very least – ask them to evaluate and outline the available arguments and positions.

[1] Tools for Combating IP Infringement on Amazon – Smith & Hopen (smithhopen.com); Amazon Copyright Infringement | Actionable Steps for Seller (ojdigitalsolutions.com).

[2] Tools for Combating IP Infringement on Amazon, supra.

[3] How to report infringement on Amazon – Red Points

[4] Amazon currently only accepts trademarks issued by government trademark offices in the United States, Brazil, Canada, Mexico, Australia, India, Japan, France, Germany, Italy, Spain, the United Kingdom, and the European Union. What Is the Amazon Brand Registry Program? – Feedvisor

[5] Beyond removing listings from the marketplace, any additional specific action taken by Amazon against an infringing seller remains confidential. Reporting Copyright & Trademark Infringment on Amazon – Feedvisor

[6] Under the evaluation procedure, accused sellers may only make three arguments: (1) the accused product does not infringe the asserted patent; (2) a court of competent jurisdiction, the U.S. Patent Office or U.S. International Trade Commission has found that the asserted patent claim is invalid or unenforceable; and/or (3) the accused seller has credible evidence that the accused products (or physically identical products) were on sale one year or more before the asserted patent’s earliest effective filing date. Amazon’s Neutral Patent Evaluation: What You Need to Know – Goldstein Patent Law | Patent Experts for Individuals, Start-ups and Entrepreneurs

[7] If there are multiple sellers who paid the $4,000 deposit but did not prevail, a total of $4,000 is retained by the evaluator. The remaining amount in excess of the $4,000 deposit is donated to an Amazon Smile charity of the patent owner’s choice. Amazon does not retain any portion of the deposit. Navigating Amazon’s Neutral Patent Evaluation in Real Life: Part I (ipwatchdog.com). Before the conclusion of the evaluation, the parties may independently settle with one another.  If the patent owner and the seller(s) come to an agreement, then the evaluator keeps $1,000 from each of the parties (a total of $2,000), and the balance is returned to the parties. Amazon’s New Patent Infringement Review Process – EGS LLP.

[8] Amazon Brand Registry: Frequently Asked Questions.

[9] Vorys Powerpoint.

[1] Amazon Stats: Growth, sales, and more – Tips, info, and stories about selling in Amazon stores. Whether you’re just getting started selling online or building an eCommerce empire, the Amazon Selling Partner blog features articles to help you get there.

[2] Amazon: third-party seller share 2021 | Statista

[3] Amazon Third-Party Seller Services Sales 2015-2021 – Marketplace Pulse. Amazon defines third-party seller services sales as including commissions, related fulfillment and shipping fees, and other third-party seller services. Id.

[4] Statista, supra note 2.

[5] Amazon Stats, supra, note 1.

[6] Amazon Stats, supra, note 1. Third-party sales in Amazon’s stores are growing at 52% a year, compared to 25% for first-party sales by Amazon. Id.