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Troy, Mich.— February 6, 2024—In an era of widespread access to information, business secrecy has become an utmost priority for companies—but also a near impossibility, according to Julie A. Greenberg, a partner at intellectual property specialty law firm Fishman Stewart PLLC. This has proven particularly true for new ventures—especially those hatched by the closely-watched giants such as Disney and Google, who go to great lengths to guard their intellectual capital and brand launches. With confidentiality at a premium, Greenberg explains an effective strategy in her IP arsenal to help clients keep things under wraps: ‘submarine’ trademark filings.
“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,” Greenberg said. “For example, the bombshell reveal of Ivanka Trump’s Chinese trademark application shows the extent that trademark snoops will go to scour new trademark application filings for a market scoop. Facebook went the extra mile to surprise us with its announcement of the new name META and likewise for Google and its announcement of Alphabet.”
In the United States, as well as in most jurisdictions, guarding the secret brand is extremely important because being the first to use or the first to file a trademark application ensures the right to obtain exclusive rights to the trademark through a trademark registration.
“Being number one is make-or-break; a leak could prove disastrous if a mole discovers the plan and gets to that trademark first,” Greenberg said. “However, an increasingly-used approach to thwart detection is through submarine trademark filings.”
The first step to applying for these stealthy trademarks begins in a relatively obscure country—one which does not make its trademark filings easily public or searchable—such as Jamaica, Lichtenstein and Honduras.
Once the trademark application has been filed in the “obscure” foreign country, step two involves the filer capitalizing on the provisions of the Paris Convention. This longstanding international treaty holds 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 the tactic used before Cleveland’s MLB baseball team 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 top secret by filing in Trinidad and Tobago months before filing in the U.S.,” Greenberg said.
This submarine approach lets applicants stay ahead of the game with six undetectable months after initial trademark filing before they can be discovered by market spies.
“Six months is enough of a head start to remain off the radars of would-be copycats and safeguard that confidential venture,” Greenberg said.
About Fishman Stewart PLLC
Fishman Stewart helps turn client creativity into valuable intellectual capital. Since its founding in 1996, the firm has obtained tens of thousands of patents and trademark registrations and represented clients in hundreds of cases in Federal Court. As strategic advisers to CEOs and senior executives, Fishman Stewart attorneys develop IP management strategies for U.S. and foreign-based companies to safeguard their business assets throughout the world. To discover how Fishman Stewart leverages intellectual property to effectively increase enterprise value, visit fishstewip.com.