Intellectual Property Insights from Fishman Stewart PLLC
Newsletter – Volume 24, Issue 2
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A Deep Dive Into Submarine Trademark Filings
By Julie A. Greenberg
In this era of unlimited knowledge at our fingertips, thanks to the internet and near complete access to public records, keeping one’s secret business plans from prying eyes is both a top priority and a near impossibility. New ventures, especially those hatched by closely watched “Big Guns,” like Disney, Google, etc., go to great lengths to guard their business launches from leaks, through NDAs, confidentiality agreements, and the like.
One common “leak” in the secrecy of a startup happens upon filing for a new trademark registration for the trademark intended to be used for the confidential venture. Trademark snoops scour new trademark application filings for market intelligence—to get a market scoop (think of the bombshell reveal of Ivanka Trump’s Chinese trademark applications). Facebook went to great lengths to surprise us with its announcement of the new name META; likewise for Google and its announcement of Alphabet.
Why is guarding the secret brand so important? In part, it’s because in the US, as well as in most jurisdictions, being the first to use a trademark or the first to file a trademark application, gives you the right to obtain exclusive rights to the trademark through a trademark registration. A leak could be disastrous if a mole discovers the plan and uses the trademark first or files first for the trademark.
So, if being the first to use or file for federal trademark registration is so important to the success of the confidential venture, how does one, especially a closely scrutinized company, file a “secret” new trademark application, given that in most countries such new filings are fully public and searchable?
One increasingly used approach is through “submarine” trademark filings. A submarine (or “stealth”) trademark filing begins with filing a trademark application for the secret mark in a relatively obscure country, one which does NOT make its filings easily public or searchable. Jamaica is an example of one such country. Lichtenstein and Honduras are on the list, too.
Once the trademark application has been filed in the “obscure” foreign country, the filer may take advantage of the Paris Convention—a longstanding international treaty providing that any trademark application filed in a member country may be filed within six months in any other member country as a “priority” application, thereby receiving the earlier filing date under the treaty. This was a tactic used before Cleveland announced its name change from the Cleveland Indians to the Cleveland Guardians. Likewise, Zynga was able to keep its filing for its game launch of GIFS AGAINST FRIENDS secret by filing in Trinidad and Tobago months before filing in the U.S.
This submarine approach gives the applicant six undetectable months after their initial trademark filing before they can be discovered by market spies: six months is a safe head start to remain off the radars of would-be copycats.
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