How Multinational Companies Secretly File Their Trademarks

Introduction

·         Multinational conglomerates are known for their ability to capture the attention of their customers with every new product announcement, often to a greater extent than other companies. These conglomerates are large corporations that own other companies or businesses in at least one country other than their own, and they are known for their ability to diversify their business interests. Take for instance, Apple’s annual product launch event was mentioned more than 2.4 million times on X (Formerly Twitter).

·         Fans, competitors, and tech prophets actively search various sources, including trademark applications, to gain early insights and make predictions about upcoming products or innovations. This practice has become common as individuals and organizations seek to stay ahead in the fast-paced tech industry. Companies have responded to this trend by becoming more strategic in protecting their intellectual property (IP) through the use of shell companies and sophisticated trademark filing tactics. By employing these methods, companies aim to conceal their IP filings and prevent competitors from easily accessing information that could give away their future plans or strategies. This proactive approach helps companies maintain a competitive edge and safeguard their innovations until they are ready to unveil them to the public.

Submarine trademarks

·         What are Submarine Trademarks: The publication of trademark filings by the trademark office plays a dual role in disclosing information about a company's new products or services while also creating a trade-off between legal protection and information disclosure. This trade-off is analyzed through the concept of "submarine trademarks", which are trademarks strategically delayed in publication to the public. Companies employ specific international filing strategies, often in conjunction with shell companies, to conceal these trademarks effectively. By utilizing these submarine strategies, companies can maintain legal trademark protection while minimizing the risk of unintentional information disclosure.

·         Why Companies opt for them: Submarine trademarks, although uncommon, constitute a minute fraction, less than 0.03%, of the total trademark applications submitted within a given timeframe. Despite their infrequency, there has been a notable surge, a four-fold increase, in submarine filings since 2006. Companies strategically opt for submarine trademarks when they seek to safeguard products or services that are about to be unveiled to the public for the first time, especially during pivotal product launches that carry significant marketing implications. This approach is particularly valuable in scenarios where companies anticipate encountering elevated opposition rates prior to filing, signifying a proactive stance in preempting potential challenges from external entities.

·         Effectiveness of Submarine Trademarks: The effectiveness of submarine trademarks stems from their capability to maintain the confidentiality of product names until a company chooses to disclose them to the public. This strategic approach proves especially advantageous for products or services with substantial economic worth, prompting companies to lean towards utilizing submarine trademarks for such high-value offerings. By intentionally postponing the publication of trademarks, companies adeptly manage the intricate equilibrium between securing legal protection for their intellectual property and preserving the secrecy surrounding their forthcoming products or services. This deliberate delay in unveiling trademarks allows companies to control the timing and manner in which they introduce their innovations to the market, strategically leveraging secrecy as a competitive advantage until they are ready for a public reveal.

How brands exploit this strategy:

·         Prominent tech companies, including Apple, have innovatively navigated the trade-off between legal protection and information disclosure by employing a unique strategy known as 'submarine' trademark filing. For instance, when Apple introduced the iMessage on June 6, 2011, it strategically initiated the trademark application process in Trinidad and Tobago on March 14, 2011, securing a priority right three months ahead of filing in the U.S. June 6, 2011. This preemptive move allowed Apple to establish global exclusivity over its new product brand name well before the official launch date. Notably, Trinidad and Tobago's lack of a searchable online trademark database meant that Apple's priority application remained concealed until the company pursued trademark registration with the USPTO. In essence, this submarine filing tactic enabled Apple to safeguard its brand name worldwide months before unveiling it to the public and competitors.

·         Apple is not alone in employing this strategy; other notable companies like Amazon , Cisco, Intel and many more also utilize submarine trademark applications. These companies often combine such filings with the use of shell companies to further obscure their trademarks, even after disclosure by the USPTO online. By leveraging these sophisticated tactics, companies can proactively secure their intellectual property rights while strategically managing the timing of public brand name revelations, gaining a competitive edge in the market by maintaining secrecy until they are ready for a full-scale product launch.

·         To effectively employ the submarine trademark filing strategy, companies should consider several key factors.

1.      Firstly, they should select a foreign country that does not have an online trademark database, such as Trinidad and Tobago, to file their trademark applications. This ensures that the application remains concealed until the company is ready to disclose it.

2.      Secondly, companies should file in the foreign country no more than six months before they wish to file in the U.S. and make their mark public. This allows them to establish priority rights in the U.S. while maintaining secrecy.

3.      Lastly, companies should file within six months of their first filed foreign application to take advantage of U.S. priority rights. By adhering to these guidelines, companies can strategically delay the disclosure of their trademark filings while securing early legal protection, ultimately enhancing their competitive edge in the market.

Conclusion

·         In Conclusion, the decision of some companies to invest considerable resources in delaying the disclosure of trademark filings while simultaneously securing early legal protection underscores the significant advantages of maintaining confidentiality regarding new products before their official launch. However, the question arises: why don't companies simply wait to file for trademark registration until just before introducing new products or brand names to the market?

·         The rationale behind not delaying trademark filings until the product launch lies in the various risks that companies face by adopting such a strategy. One primary risk is the potential conflict with previously registered trademarks. This risk materializes through inadvertent 'shoulder rubbing,' where other companies submit applications to register identical or similar trademarks. In such cases, the later filer may encounter conflicts with prior filings, leading to registration obstacles and necessitating re-branding efforts to avoid legal disputes and secure exclusive rights over their brand names. This highlights the importance of proactive trademark filing strategies to mitigate risks and ensure a smooth transition from product development to market introduction without encountering trademark conflicts that could impede branding efforts.