On the Corner of IP and Amazon: Navigating Trademark, Patent, and Copyright Law

By Mario Simonyan

Fear, frustration, and uncertainty can plague you if you're an Amazon third-party seller. Overnight, Amazon can suspend your account, taking your income and livelihood with it and leaving you questioning when-or if-you'll get it back. 

• Language: English
• Publisher: Lioncrest Publishing
• Release date: Feb 21, 2023
• ISBN: 9781544539416

Mario Simonyan

Mario Simonyan is an intellectual property attorney and the founder of ESQgo, P.C., a law firm working exclusively with Amazon sellers to navigate intellectual property issues that arise from selling online. Before founding his law firm, Mario established two seven-figure, private-label brands on Amazon, enabling a comprehensive understanding of the unique challenges in e-commerce. Mario has developed Synthetic Arbitration, a proprietary method that helps clients resolve disputes and get back to business quickly. He lives in Burbank, California, with his wife and their two sons.

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Contents

Introduction

Chapter 1. The Digital Marketplace

Chapter 2. Trademarks

Chapter 3. Copyrights

Chapter 4. Patents

Chapter 5. Brand Enforcement

Chapter 6. Black Hat Tactics

Chapter 7. Standing Up to the Giant

Chapter 8. Synthetic Arbitration®

Conclusion

This is a work of nonfiction. All of the anecdotes and examples are true, and the author has re-created conversations and details from his memory of them. In order to maintain the anonymity of clients or other parties, some identifying details (including names, locations, or products) have been changed.

Copyright © 2023 Mario Simonyan

All rights reserved.

On the Corner of IP and Amazon

Navigating Trademark, Patent, and Copyright Law

ISBN  978-1-5445-3943-0  Hardcover

ISBN  978-1-5445-3942-3  Paperback

ISBN  978-1-5445-3941-6  Ebook

To Leo and Nico,

May you always stay curious.

Introduction

I’ve always been fascinated with the business of importing and exporting. When I was an elementary school student (and while many of my contemporaries were playing Little League or attending Cub Scout meetings) I was fantasizing about importing enough Lamborghinis so that I could eventually own that kind of fantasy sports car.

As a law student, I watched as many of my classmates took jobs ranging from waiting tables and loading UPS trucks to clerking for attorneys or working as paralegals to pay for tuition. With all of our course requirements, I knew I didn’t have time for that kind of thing. Besides, I’d also always known that I would prefer to start my own business instead of working for someone else.

This was right when Amazon’s Fulfillment by Amazon (FBA) program was really taking off: launched in 2006, the program allows third-party sellers to store their products with Amazon; the company also takes care of packing, shipping, and customer service on behalf of those sellers. FBA was a game changer, and customers began flocking to the site in search of convenient ways to buy everything from CDs to PlayStations. I saw a real opportunity in this and began watching YouTube instructional videos on how to launch a successful online business. That’s when everything clicked.

To this day, I can’t remember if I borrowed against one of my student loans or maxed out one of my credit cards, but I do know that I used that money to order a thousand units of a combination avocado slicer and pit remover—not because I have an obsessive interest in making guacamole, but rather, because I knew that women made up a particularly strong demographic of Amazon shoppers, and the women in my life really enjoy cooking and experimenting with new kitchen gadgets.

The hunch paid off. In no time, my new Amazon storefront had sold out of all the avocado slicers. I ordered another thousand, and they soon went as well. I added a second product—a strawberry stem remover—and they sold out too. Not long after, I added a cutting board and chef’s knife, along with a magnetic strip on which to hang it and other knives. They sold out as well, and I was feeling confident I’d mastered the Amazon Marketplace.

A little too confident, as it turned out.

On a whim, I ordered a shipping container of artificial grass from China. Five massive rolls arrived, and I immediately realized there was no easy way I was going to be able to sell it. The rolls of artificial grass languished in their container, while I stewed about my hubris, dismayed that I would never be able to unload the shipment.

One morning as I was drinking my coffee, an idea dawned on me: what if we cut up the artificial turf and make doormats? I hired a few people from one of the big-box hardware stores to size and cut the mats.

The first go-round was a total mess: the edges weren’t cut straight, and many of the mats had fraying or uneven edges. But we kept at it. We ordered some cut-rate black-and-white labels; we purchased poly bags in which to ship the rolled-up mats; I took some amateurish photos of it all and put it on Amazon. Guess what? They ended up taking off too. We were the first company to sell these mats, and there was a definite demand. We negotiated with a manufacturer who supplied artificial turf to professional soccer stadiums around the world and secured a shipment of our own specially cut design. At the time, I didn’t make much of the turf representative’s repeated questions about whether or not I really wanted to do this. In hindsight, that was clearly a mistake. It never occurred to me to protect my product with any kind of intellectual property (IP) rights, whether it was a design patent or trademark for the mat or a copyright for our advertising language and other branding materials. Other online sellers noticed our success, and they soon began producing their own mats as well, with no legal consequences. Our corner of the market quickly disappeared.

As an Amazon sellers’ lawyer, a former Amazon seller, and now the founder of ESQgo®, a successful intellectual property law firm, I still see this kind of issue again and again. And frankly, those clients are the lucky ones. Others have found their listings removed from the site, their accounts suspended, their inventory destroyed, or their businesses kicked off the site entirely. That’s because, in a lot of ways, Amazon is its own sovereign nation, complete with its own laws and legal processes. To be successful there, you have to understand those laws as well as how to participate in the court of Amazon. You also need to understand what business models work for online sales and why. To navigate it all successfully takes a level of business maturity as well as knowing when you need to consult an attorney specializing in intellectual property who can help you determine what to protect, when to establish those protections, and how.

Amazon is the wild, wild west: a place where villains wearing black hats have become very skilled at playing dirty and using tactics to undermine and even ruin their competition. They’ve figured out how to get your Amazon products and pages suspended, and they’ll go to dramatic ends to make sure that’s what happens. The more successful you are there, the more issues you are going to have with competitors who refuse to play fair.

To further complicate matters, Amazon can be a black box where information is concerned, so knowing what you have access to and what you can control is also a challenge. The company’s policies are constantly evolving and changing, which can make it difficult for sellers to know how best to navigate the space and what options they have available to them should they need to take action, including seeking arbitration. The fact of the matter is that the deck is already stacked against you as soon as you find yourself in a dispute about your Amazon business. Arbitration can be expensive and time consuming, drawn out for months or even years, all while your account is suspended and your business is losing money.

On the Corner of IP and Amazon: Navigating Trademark, Patent, and Copyright Law provides companies and private sellers with a practical guidebook for managing intellectual property concerns in an online marketplace. To be clear: this book isn’t going to tell you how to sell on Amazon or provide any tricks to that effect. It