Intellectual Property Insights from Fishman Stewart PLLC
Newsletter – Volume 24, Issue 2
Share on Social
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.
Related Content from Fishman Stewart
Momofuku, founded by celebrity chef David Chang, is well known for its crunchy, peppery, and umami-flavored condiment, CHILI CRUNCH. Momofuku acquired rights in the trademark after a dispute with Chile Colonial over the name and subsequently sought to enforce its rights in CHILI CRUNCH against purported infringers using the same term for competing products.
First, a big “thank you” to all our readers who have given feedback on our newsletter. We appreciate your interest and insights. It is always a treat to hear from you! Second, we wanted to provide you with updates on some of our most popular articles
How will you be celebrating World IP Day on April 26th? Finny will be swimming around the world testing the cleanliness of our waters and visiting his friends under the sea because this year’s topic is “Sustainable Development Goals” (or “SDGs” for short).
Climate change has increasingly dominated daily news cycles, signaling a growing urgency for action. The escalation of temperatures during the hottest months serves as a stark reminder of the immediate need for solutions.
President Donald Trump recently began promoting a brand-new pair of limited edition sneakers for sale bearing a T logo, American flag design, gold upper, and red sole bottom. Surprisingly, the Never Surrender High-Tops bear a striking resemblance to these high-end fashion sneakers manufactured and sold by famous footwear designer Christian Louboutin.
The issue of deepfakes has been making headlines as the US enters another presidential election cycle, due largely to concerns over the potentially deleterious effects of misinformation on voters.
“Palworld”— a computer game created and published by Japanese developer Pocket Pair. Released as an early access game in January 2024, it sold over seven million copies on the computer platform Steam in the first five days and had nearly 20 million players in the first two weeks.
This year’s Super Bowl featured a thrilling overtime victory for the Kansas City Chiefs over the San Francisco 49ers. With estimates as high as 123 million viewers, America's premier sporting event also serves as a grand stage for creativity and intellectual property protections that enhance the game’s success.
Valentine’s Day is just around the corner and jewelry sales are usually around $6 billion USD in the United States alone. In 2021, the US Customs and Border Protection agency seized over $1 billion USD worth of counterfeit pieces of jewelry.
Detroit Lions In Copyright Dispute Over Barry Sanders Statue
Fish Tank: Newsletter Volume 24, Issue 3
This season marked many ‘firsts’ for the Lions including unveiling the first statue at Ford Field immortalizing a former Lion: Barry Sanders. However, some may not consider the Sanders statue a clear ‘win’ for the Detroit Lions franchise.
IDENTIFYING, SECURING AND ADVANCING CREATIVITY®