5 important intellectual property questions for international sellers entering the U.S. market

Online third-party sales platforms like Amazon Marketplace, Walmart.com, e-Bay, and Etsy are all great ways for international sellers to enter the U.S. market. There are, however, important IP considerations international sellers should address before they start putting their products up on these sites.

1. Does your product contain patentable subject matter? You should assess and consider whether your product contains patentable subject matter. There are significant advantages to filing patents in the U.S., especially if you are considering selling on a marketplace in the U.S. You can take advantage of the available treaties and claim priority to international patent applications you may have already filed. There are strict deadlines on when you can file (e.g., you only have 12 months for the international filing date to file in the U.S. for utility applications and six months for design patents), so be sure to discuss it early with your intellectual property attorney.
2. Is the packaging for your product unique? Another consideration for patents is your product packaging. With shipping being an important aspect to selling on online marketplaces, any advantage or benefit your packaging provides may provide the appropriate incentive to file. You should investigate whether any patents can be filed on the packaging, including design patents. This is another way of differentiating your products from others.
3. Have you filed a trademark application for your brand? Upon entry into the U.S. markets, you should file trademark applications for your brand. These trademark applications may be filed based on a trademark application filed in another country or a registration from another country. The international application or registration may provide a filing basis for the U.S. trademark application in addition to actual use or intent to use bases, Further still, the Madrid Protocol is also a powerful and cost-effective tool to use in filing a trademark application in multiple jurisdictions. U.S. trademark attorneys can help develop an appropriate filing strategy.
4. Do you have a trademark strategy? Having a strong trademark strategy is important because many of the online marketplaces have trademark enforcement mechanism that can help protect your trademarks. For example, Amazon utilizes a brand registry to help sellers with enforcement of their trademarks. One important consideration of this program is that it requires that the trademark to be enforced be on the Principal Register in the U.S. Therefore, it is important to take advantage of these programs where the registrations are on the Principal Register as opposed to the Supplemental Register. The easiest way to ensure that marks get on the Principal Register is to ensure the marks are not descriptive or generic. Be sure to work with U.S. counsel to help improve the likelihood of the marks ending up on the Principal Register.
5. Does your product contain an artistic component? If the answer is yes, you may want to consider filing a copyright application for these artistic components (e.g., photos, drawings, or the like). If you sell furniture you may also want to consider copyright protection for the product. Because copyright protection is not as broad as patent protection, including design patents, copyrights should not be a replacement for patent protection. You may want to consider it as a supplement to patent protection. One particularly useful reason to file for copyright protection is that it will allow for recovery of statutory damages for infringement.

One last thing to consider is that you should conduct trademark and patent clearance searches to ensure that your branding and products themselves do not infringe on any third party’s U.S. patent or trademark rights.

For questions on developing a cost effective and comprehensive search strategy, contact the attorney listed below.