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How to Keep Your Trademark Application a Secret

Posted Friday, October 21, 2016 by Daniel Mills

Most companies want to keep new product information a secret as long as possible, or at least be able to control when the information "leaks" out. US trademark filings are public record from the time a filer clicks the submit button on the USPTO website, so what can a company do keep it under wraps for as long as possible?

You do what Apple does, which is first file your application in a country that does not maintain an online or easily searchable trademark database and then take advantage of section 44(d)of the Lanham Act. Section 44(d) of the Trademark Act permits a party to file an application in the United States with a claim of priority based upon an earlier-filed foreign application. The United States application must be filed within six months from the filing date of the foreign application on which the United States application is based. An application filed pursuant to Section 44(d) is not required to allege use in the United States or elsewhere, nor are specimens showing use of the mark required.

Apple is not alone, this trick is used by many big tech companies such as Microsoft, Google, and Amazon. Apple's favorite country is Jamaica because if you want to search Jamaica's trademark filings, you have to do it in person in Kingston. Other countries with similar situations are Iceland, South Africa, Tonga, and Trinidad and Tobago, and many African countries.

It is not a guarantee, as the applications are not secret, they are just hard to search, especially when a shell company is used to file the foreign applications. Also, it is not cheap, but when keeping a new trademark a secret is important, then it is worth a shot.

How to Keep Your Trademark Application a Secret ›› Ruttler Mills PLLC