The Wall Street Journal Law Blog examines a stealthy business practice used by Apple and other brand owners to obtain trademark protection for their future product names while effectively keeping such names a secret. As discussed in The New York Times article from yesterday’s post, Apple was widely expected to call its new smartwatch the iWatch, in keeping with its conventional practice of using “i”-formative product names (iMac, iPhone, iPad, etc.). However, the company bucked the trend by simply calling the device the Apple Watch.
If Apple had filed an intent-to-use U.S. trademark application for the name APPLE WATCH to reserve the name in advance, the application would have been publicly available for all to see, and the traditional veil of secrecy that cloaks new Apple products prior to their launch would have been lost. To maintain some level of secrecy while still securing an early filing date, Apple took advantage of the Paris Convention for the Protection of Industrial Property, a treaty between the U.S. and 174 other countries that allows a trademark application filed in one member country to claim priority to an equivalent trademark application filed in any other member country, if the later application is filed within six months of the filing date of the earlier application.
In this case, Apple filed a trademark application for the mark APPLE WATCH in Trinidad and Tobago on March 11, 2014, which allows the company until today, September 11, to file an equivalent U.S. trademark application for APPLE WATCH with an effective filing date of March 11, 2014. Apple was thus able to wait until after its September 9 unveiling of the Apple Watch to file its U.S. trademark application, relying on the relative obscurity of the Trinidad and Tobago Intellectual Property Office to effectively hide its earlier filing (Apple presumably filed or will file its U.S. application sometime between September 9 and today, but new applications take a few days to publicly appear in the USPTO database).
Apple’s tactic in protecting the APPLE WATCH name highlights some of the strategic options available to brand owners, and demonstrates how the seemingly opposing goals of secrecy and trademark protection can actually work in harmony. Plus, it provides a perfect excuse to post another picture of the product itself. Read the full article here.