Keep It on the 44(D)ownlow: Filing Trademark Applications Abroad to Preserve Confidentiality and Priority
Alt Legal Team | January 26, 2021
In the United States and in many countries throughout the world, once a trademark application is filed, the application and all its details become searchable public records. While this is important as it helps clients stake a claim as they establish their legal rights, there are circumstances where public disclosure of a client’s trademark activity can actually be detrimental to their business. Perhaps a client is preparing to announce a new product or technology, a new company, or a new slogan or logo, and wishes to keep this information confidential until they are ready to go public. It can be challenging to balance a business’s need for confidentiality with protecting its valuable intellectual property.
One way to help preserve confidentiality while establishing trademark rights is to file an application with the USPTO under Section 44(d). While §44(d) was not designed for the purpose of preserving confidentiality, it can be used to this effect if you use the correct jurisdiction to file your initial trademark application.
The primary purpose of §44(d) is to allow applicants of foreign filings to file US trademark applications within six months of the foreign filing date. §44(d) applies the foreign filing date to the US application, allowing applicants to confer an earlier priority date to their US application.
There may be any number of reasons why an applicant would choose to file a trademark abroad and then later apply for a US trademark pursuant to §44(d). However, in a situation where an applicant wants to secure trademark protection but avoid disclosure, a sophisticated trademark practitioner may suggest filing abroad in a foreign jurisdiction that does not have a publicly-searchable database (including the Kingdom of Tonga, Jamaica, Mauritius, and Azerbaijan) and later filing in the US pursuant to §44(d). This secures a period of up to six months where the mark is not publicly disclosed, allowing clients to continue confidential business operations knowing that their trademark rights have been secured. This article provides information about this strategy including who is using this strategy and why, drawbacks for using this strategy, how to pursue this strategy, and alternatives to this strategy.
Who is using this strategy and why?
We reported five years ago that major tech companies like Apple, Google, and Microsoft used §44(d) applications based in countries like the Kingdom of Tonga, Jamaica, Trinidad and Tobago, and Lesotho (countries that do not list their trademark applications on publicly-searchable databases) to gain earlier filing dates without making their plans public. It is especially beneficial for tech companies to utilize this strategy to protect their developing technology from going public and possibly being poached by another company. When listing the goods and services to be used in connection with a particular mark, the trademark applicant must disclose specific information that could divulge technology or new products that are meant to be released on a particular date. We’ve seen that companies like Apple rely heavily on product releases as a marketing strategy, and this trademarking strategy allows them to keep product names under wraps until they’re ready to disclose them. If information about a new product were to leak ahead of time, the suspense, surprise, and ensuing hype and market interest surrounding an Apple product release would undoubtedly be harmed. For these reasons, it can be advantageous for tech companies to maintain secrecy around early trademark filings.
Another circumstance where a trademark applicant may take advantage of this strategy is where a well-known and established company is looking to extend their brand to cover goods and services not related to their original trademarks. Also, they could be creating a new brand covering new goods or services that their original marks would not help cover. FaceTime, Apple Pay, and Google’s Orion are prime examples of this. In these cases, applying abroad in jurisdictions without publicly-searchable databases provided these companies with the assurance that no one would be able to discover the company’s plans and launch a brand under the same name as the intended tech product. As an example, Google used §44(d) to file a trademark for NEST AUDIO (its new smart speaker, announced October 2020). Google filed in the Kingdom of Tonga on April 29, 2020 and extended its application to the US on October 22 pursuant to §44(d).
Several other trademark applicants have used this strategy, filing abroad in jurisdictions without publicly-searchable databases and later filing in the US pursuant to §44(d):
The Dixie Chicks filed a §44(d) application with the USPTO for their new band name THE CHICKS on July 27, 2020 after first filing in The Kingdom of Tonga on June 23, 2020.
The Walt Disney Company filed a §44(d) application with the USPTO for a new movie DISNEY PIXAR LUCA on July 29, 2020 after first filing in Jamaica on February 11, 2020.
Twitter, Inc. filed a §44(d) application with the USPTO for TWITTER AMPLIFY on December 20, 2020 after first filing in Jamaica on June 26, 2020.
Home Record, LLC (a company associated with music artist Frank Ocean) filed a §44(d) application with the USPTO for HOMER on November 4, 2020 after first filing in Azerbaijan on May 5, 2020.
Salesforce.com, Inc. filed a §44(d) application with the USPTO for SALESFORCE INTERACTION STUDIO on August 18, 2020 after first filing in Jamaica on February 21, 2020.
WeWork Companies, LLC filed a §44(d) application with the USPTO for WEWORK ON DEMAND on December 29, 2020, after filing in Mauritius on July 1, 2020.
Who else might consider using this strategy?
If your client has numerous trademarks that they are market testing and they want to lock in a date for all of them, but not necessarily disclose the potential marks, they can use this strategy. A consideration is that many jurisdictions throughout the world do not require a bona fide intent to use a trademark to file an application; however this is a requirement in the US. While the USPTO allows a contingency for market testing and considers market testing to be a bona fide intent to use a trademark, some applicants may be more comfortable filing abroad in a jurisdiction where they do not have to make that assertion.
Additionally, applicants may pursue this strategy if they are looking to easily withdraw unused applications. For example, as in the prior-mentioned scenario, if an applicant is looking to file several applications, pursue certain applications after completing market testing, and withdraw the applications they are not using. In some jurisdictions, it may be easier to withdraw applications than it is in others that may require additional fees and filings and related attorney’s fees.
Another reason why you may consider using this strategy is if your client is conducting business internationally and is seeking global trademark protection. Since many foreign jurisdictions do not require a mark to be in use to be registered, you may be able to secure trademark registrations in many countries, even where your client doesn’t specifically conduct business currently. This can be useful if your client is an established international brand and is seeking to prevent infringement and counterfeiting globally.
Another scenario where this strategy may be useful is if your client is rebranding or establishing a new company name and they are in the planning stage where they have not yet set up the new company in the US, but they want to lock in the priority date for a trademark, you may consider filing abroad. Once your client sets up the new company name in the US, you can file an assignment in the foreign jurisdiction and then file with the USPTO pursuant to §44(d). It’s important to note that you cannot assign a §1(b) application, so by handling the initial filing and assignment abroad, you are able to secure the trademark priority date in the proper business name before filing in other jurisdictions.
Lastly, you may consider this strategy to prevent domain name speculators from registering a domain before the applicant has had the opportunity to do so. Domain name speculators may monitor new filings where there is a publicly-searchable trademark database and register domain names in order to sell them to the trademark applicant. This can be frustrating, costly, and time consuming for the applicant. By filing abroad in a jurisdiction without a publicly-searchable trademark database, the applicant will be better protected from domain squatters.
What are the drawbacks for using this strategy?
Filing a foreign application is costly. It involves foreign filing fees and often attorneys’ fees for local counsel to handle the filing. Costs can add up quickly for a client, which may be prohibitive when the resulting benefit is just six months of secrecy. Moreover, the six-month time frame in which the applicant must then file the §44(d) application with the USPTO in order to take advantage of their foreign filing date can raise additional costs and challenges. The applicant must ensure that they are ready to file a US application within this window or else lose the priority won by the earlier-filed application. Additionally, it can be difficult to predict business timelines, and the six-month window may force the owner to reveal business plans earlier than expected.
Another drawback to filing pursuant to §44(d) in general is that many jurisdictions require a Power of Attorney to file a trademark application. However, many of the jurisdictions mentioned in this article allow the Power of Attorney to be filed later in the application process. If your client is in a rush to file an application and you don’t have time to secure a Power of Attorney, then filing in any of these jurisdictions may be an option.
How can I pursue this strategy?
If you’re looking to pursue this strategy, the first step is to file a foreign trademark application. You’ll want to select a country that does not have a publicly-searchable trademark database. Ideally, you should choose an English-speaking country where there is no translation requirement, so you do not need to pay additional fees for translation.
Once you’ve filed the foreign application, you should docket the filing deadline (6 months from the date of the foreign filing) along with several reminders at regular intervals so that you can stay on top of the matter. Additionally, you should add the mark to any watch services that you use and also create a Google Alert to keep a close eye on any activity related to the mark.
Next, you should prepare the US application and secure all necessary client approvals well-ahead of the filing deadline so that you are fully prepared to file the US application at the 6-month mark. In certain circumstances where your client may need additional secrecy in the US application, you could consider creating an LLC with a non-discoverable name and registered agent to protect your client’s identity.
Before the 6-month deadline and at regular intervals, you should check in with your client to discuss launch plans and any changes that could allow for filing the US trademark application before the 6-month deadline. For example, if the client is prepared to launch earlier than anticipated, you may want to file the US trademark application right away.
Once you file the US application, the application details will be discoverable. Be sure that your client is prepared for this disclosure so that it doesn’t come as a surprise that the information is public. Your client should be prepared to make any necessary announcements or to distribute press releases, if applicable.
What are some alternatives to using this strategy?
There are other ways of securing trademark protection while keeping your client’s business activities secret. You may consider, as some brands have, waiting until the day of a new product/brand/logo launch to submit trademark applications to the USPTO. For example, Amazon filed an application for AMAZON EXPLORE the day that the product was announced, on September 29, 2020.
In some cases, trademark applications are filed years before use is established or products are announced as a way of setting up for a successful announcement. While this does not allow for complete secrecy, it can still help your client secure trademark rights wel
l before they begin using the mark (and the distance between the application and the use of the trademark may allow the public to forget about the application). For example, Kanye West, through his company Mascotte Holdings, Inc., applied under §1(b) for the mark YEEZY on August 8, 2013. Use in commerce was not declared until over three years later, after Adidas released the first Yeezy shoes. By filing an application well-before commencing use, Kanye effectively announced his business plans to use the YEEZY mark in connection with shoes; however, the designs were not disclosed until much later. This may be an effective strategy if complete secrecy is not required.
§44(d) is a very important and useful basis for filing US trademark applications. As detailed in this article, there are many reasons why an applicant would choose to file abroad before filing domestically. Furthermore, there are additional reasons why an applicant may choose to file abroad in a jurisdiction that does not have a publicly-searchable trademark database. This is a particularly useful method for tech companies, companies experimenting with new products or divisions, applicants in the public eye, or others who are concerned about public disclosure of their trademark filings. With careful planning, sophisticated trademark attorneys can guide their clients towards a strategy that meets their business goals.