The ideal situation for a new product in a competitive marketplace is to keep the new product under wraps as long as possible, while seeking trademark priority rights. However, the process for obtaining trademark rights (for a trademark that has not yet been used) requires the filing of an application to register that trademark at the United States Trademark Office. Unfortunately, the filing of such an application becomes public shortly after it is filed.
In most cases this is not a problem for the trademark owner. However, when it comes to high-profile companies in a competitive marketplace, such as Apple, Microsoft, Samsung and other tech companies, public knowledge of a new product may have far ranging consequences. For example, if Apple develops a watch that has new and novel functions, even the slightest leak that a watch is being developed may have an effect not only on Apple’s stock price, but on its competitors’ stock prices as well. Consumers may withhold purchases in anticipation of the new watch not only affecting purchases of now available Apple watches but also its competitor’s watches. Apples’ competitors may also feel the need to speed up their development of new watches in order to match Apple’s development.
Of course, the new watch has to have a brand – a trademark – to promote the sale of that watch. In such high-profile environments, competitors carefully watch the records of the US Trademark Office to see who has made new filings. A published trademark application not only includes the identity of the owner but also the intended specific goods and services with which the new trademark is going to be used.
Is there such a thing as a covert trademark filing?
The short answer is yes! But only the filing remains hidden and only for six months and only if it’s done a certain way. So here is the recipe for keeping the filing of a trademark away from prying eyes. First, however, some trademark law background.
An international agreement called the Paris Convention was adopted in 1883 to provide a platform for the protection of intellectual property rights amongst countries. Specifically for trademarks, a trademark application can be filed in one country and the filing date of that initial trademark filing will be recognized as the filing date in a subsequent country filing. The Paris Convention uses the phrase “right of priority” to identify the claim of using the first filing date as the date for subsequent trademark application filings. In other words, the subsequent filings will be regarded as if they had been filed on the same day as the initial application filing.
So, you ask, how is this useful to keep a trademark filing covert? It has to do with the Internet – or the lack thereof – in certain trademark offices. Trademark filings in most trademark offices can be searched online. There are still a few trademark offices in the world that do not provide online access to their trademark filings. In the example of Apple’s new watch and wanting to obtain trademark rights as soon as possible, Apple chooses such a country and files an initial trademark application. Apple may even file that initial application through a wholly owned subsidiary having a name unrelated to Apple.
Under the Paris Convention, Apple or its wholly owned subsidiary can then file an application in the United States trademark office to register that trademark, based on an intent to use that trademark which now has a filing date that is six months old!
As a final word and to simplify this, the following jurisdictions do not currently publish trademark applications online: Honduras, Jamaica, Liechtenstein, Mauritius, Saint Lucia, Swaziland, Tonga, and Trinidad and Tobago. There are a few others and all the jurisdictions have very willing and able trademark practitioners happy to oblige. You may also want to consider visiting, for example, Jamaica or St. Lucia to personalize the filing and perhaps consider the cost of the trip as a business expense. 🙂
