US Trademark Before Brand Registry: Which Mark to File and What Registry Will Not Do

Amazon Brand Registry asks for a trademark. It does not create one. For a brand that wants the United States, the filing comes first, in the name of the company that should own the name, for the words customers will actually type. Registry is the second step. It is how that filing becomes catalog tools, A+ Content, a Brand Store, and a way to report a listing that misuses the name.

The mechanics of enrollment are already written up in the Brand Registry essay. This one is the sequence an international brand skips, and then pays for. If those words replace a name already on a live ASIN, keep the listing. The steps are in the rebrand essay. AEG is not a law firm. The filing is a legal application. The order of operations is a brand decision, and it belongs in Brand Foundation. The wider path is US market expansion.

What Amazon will accept

Amazon’s public requirements, on sell.amazon.com/brand-registry, are narrow.

You need an active registered trademark, or in the cases Amazon allows, a pending application, from a government trademark office in a country where Amazon runs a store. The mark has to be a word mark, or an image-based mark that contains words, letters, or numbers. A logo with no readable text does not qualify. The text on the trademark record has to match the brand name on the application, aside from capitalization. You, the applicant, have to be the owner. An agent gets added after the owner enrolls.

You also need the brand name permanently on the product or the packaging. Amazon’s examples are printing, sewing, and etching. A sticker or a hangtag does not count. You upload a photograph of the real item. Mockups are rejected.

One Registry account is global. You add other countries’ trademarks after the first enrollment is approved. If you used the Madrid System, Amazon wants the national-office serial number for the country you are claiming, not only the WIPO international registration number.

Walmart is stricter on status. The Registry essay notes Walmart Brand Portal’s requirement for an active USPTO registration. A pending application Amazon accepts can be useless at Walmart. If both shelves are in the plan, file toward registration, not toward the first marketplace that says yes. The channel choice is in Walmart Marketplace vs Amazon.

Which filing basis, in the United States

The USPTO requires a filing basis. For a brand entering the US, two are the common ones. The office explains them on its basis page.

Section 1(a), use in commerce. You are already using the mark in US commerce on the goods in the application. You submit a specimen, the date of first use anywhere, and the date of first use in commerce. “In commerce” is the USPTO’s test, not “we have a website.”

Section 1(b), intent to use. You have a bona fide intention to use the mark in US commerce, and you are not using it yet. You may file before the first US sale. The mark does not register until you file an acceptable allegation of use: an amendment to allege use before publication is approved, or a statement of use after a notice of allowance. The USPTO gives six months from the notice of allowance to file that statement, and you can request extensions. An intent-to-use application buys an earlier filing date. It does not put a registration certificate in your hand.

Section 44(e) or 44(d). A foreign registration, or a foreign application filed within the priority window, can be a basis. The USPTO still examines the US application. A home-country registration is not a US registration. Amazon can accept a trademark from another office that corresponds to an Amazon store. If the store you care about is the United States, a US application is the one that matches the shelf.

Search before you print packaging. The USPTO’s own instruction is to search. Do it, and search Amazon for the same words. A live application in the same class, or a crowded field of similar marks, is cheaper to discover now than after the dielines are approved.

We are not quoting a filing fee. The USPTO changes fees, and the amount depends on the form and the classes. Read the current fee schedule on uspto.gov the week you file.

Who should own it

The owner on the trademark record should be the company that will enroll in Brand Registry. Three candidates show up constantly, and they are not interchangeable.

• The factory, which made the goods and sometimes registered the name at home in the plant’s name.
• The home-market brand company, which may or may not be the factory.
• The US distributor, which would like the registration because it is “handling America.”

If the distributor owns the mark, the distributor owns the Registry enrollment. You can assign a trademark later. It is slower, and it is a negotiation you will have after the distributor already has the leverage. Decide the owner before the specimen photo.

The name on the goods has to be the name in the application. A sub-brand, a product line, and the company name are three possible filings. File the name that will sit in the Amazon title. A word mark on that name is the one that matches the listing. A design mark of a crest, with no words, will not get you into Registry.

Then enroll

When the application number exists, and the name is permanently on a real unit you can photograph, enroll. Amazon’s requirements say a pending application is acceptable in some cases. Use that path when it is open. Do not wait for a registration certificate out of caution if a pending mark is enough, and do not enroll a name you have not filed.

After approval:

1. Add the people who operate the account. Keep the owner’s access. An agency with the only login is how a brand loses its own registry.
2. Then build A+ Content, the Store, and advertising that uses the brand’s assets. The public selling guidance ties those tools to Registry. What they are for is the story essay.
3. Report the right problems. Registry does not delete other sellers of genuine goods you already sold into the market. It gives you a path when someone uses the name on a counterfeit or copies the listing. The weekly operating list is in the protection essay.

Transparency, the serialization program, asks for something stricter than Registry: an active registered trademark and the rights-owner role, plus a GTIN. A pending application that gets you into Registry may not get you into Transparency. The distinction is in the Transparency essay.

What filing does not decide

It does not set the price. It does not choose the customer. It does not make the product compliant. It does not ungated a category. It does not stop a comparative listing that never uses your trademark. Those are separate workstreams: pricing, compliance, gated categories.

It also does not move on a launch calendar you invented. Examination, publication, and opposition take the time they take. Do not schedule a national wholesale meeting on a rumor about someone else’s approval. You can sell while an application is pending, if the rest of the account is allowed to sell. You should not build the US package around a name you lost the right to register.

Questions

We already have a trademark at home. Do we still file in the US?

If you want a US registration, yes. A foreign registration can support a US application under section 44. It is not itself a USPTO registration. Amazon may let you enroll with the home-country mark when that office is on Amazon’s list. Walmart Brand Portal, as described in the Registry essay, has asked for an active USPTO registration. Read both program pages the week you enroll. Do not treat one acceptance as both.

Can our US agency file in its own name and assign it later?

It can, and you will spend the next year asking for the assignment. File in the owner’s name. Add the agency as a representative inside Registry after enrollment. Amazon is explicit that the trademark owner enrolls, and then adds users.

Should we file a logo or the name?

File the name, as a word mark, if you have to choose one. Registry rejects marks with no words, letters, or numbers. You can file the logo as well when it contains the name. The title of the listing has to match the words on the record.

Sources

• USPTO filing bases. Sections 1(a), 1(b), 44(d), and 44(e).
• USPTO intent-to-use applications. When you must show use before a 1(b) application can register.
• Amazon Brand Registry. Pending or registered mark, word or design-with-words, owner applies, name permanently on the product.
• Amazon Transparency enrollment requirements. Registered trademark and rights-owner role, which is a higher bar than a pending mark.

Book a strategy call

If the name is worth owning in the United States and it is not yet filed in the owner’s name, send a brief or Book a strategy call.