Tongan Shell Game: How Apple and Google File Trademarks
Alt Legal Team | September 29, 2015
Few product announcements command the same level of attention as Apple’s. Its semi-annual product event this September was mentioned over 2.4 million times on Twitter alone. Fans, competitors, and tech prophets scour whatever sources, including trademark applications, to derive early insight and create predictions. Companies are becoming increasingly savvy as a result, hiding their IP filings using a combination of shell companies and clever trademark filing strategies.
Because trademark applications are given priority based on filing date, businesses generally seek to file as early as possible to ensure they maintain all rights to the trademark. In many countries, including the US, trademark applications are public information and electronically searchable as soon as the company files for the trademark. But how do tech companies hide intellectual property filings if they’re supposed to be part of the public record?
Luckily for Apple, and anyone who has the financial resources and legal insight, Section 44(d) of the Trademark (Lanham) Act provides a way to file early and without immediate public disclosure.
A Section 44(d) trademark filing is a US application that relies on a foreign application to establish a priority filing date. For example, if a 44(d) application is filed in May 2015 and is based on a Japan filing from February 2015, the applicant will have the benefit of the February 2015 priority date and retroactive protection for their US application. The only catch is that a Section 44(d) US application must be filed within six months of the foreign application date.
As Roberto Ledesma points out in his article about Google and its filings in the Kingdom of Tonga, Section 44(d) does not prohibit a US-based company from filing abroad and then using that application to get a priority date in the US. This is because Section 1002.02 of the Trademark Manual of Examining Procedure, which Ledesma breaks down, does not require that the underlying application be filed in the applicant’s country of origin.
But, this is not the case with Section 44(e) applications, which are based on foreign registrations. An applicant cannot file a 44(e) application unless they already have a foreign registration and can prove it is from their country of origin.
So, why would a US-based company file abroad instead of with the USPTO?
If the foreign country does not make its trademark application information available online, it will be significantly harder for anyone to discover the application. Likely, it would not be found until the applicant claims priority in the US six months later. This gives companies six months of secrecy without losing any of the rights they would have had if they would have filed in the US first.
Google and Apple both take advantage of this process on a regular basis. Apple goes one step further by creating shell companies to file their foreign applications. These companies often file in Jamaica, Trinidad and Tobago, or the Kingdom of Tonga—countries with no publicly available online trademark database.
We’ve found several instances in which Google and Apple have taken advantage of this process to have the benefit of an earlier filing date without having to reveal their plans.
|Company||Trademark||Foreign IP Office Used||Foreign Filing Date||US Filing Date||Product Announcement Date|
|Apple||iPod||Switzerland||August 31, 2001||October 19, 2001||October 23, 2001|
|Apple||Apple TV||Trinidad and Tobago||November 13, 2006||April 9, 2007||January 9, 2007|
|Apple||Facetime||Trinidad and Tobago||April 29, 2010||June 7, 2010||June 7, 2010|
|Apple||iMessage||Trinidad and Tobago||March 14, 2011||September 14, 2011||June 6, 2011|
|Apple||Apple Pay||Jamaica||June 19, 2014||December 17, 2014||September 9, 2014|
|Google Chromecast||Kingdom of Tonga||June 5, 2013||July 24, 2013||July 24, 2013|
|Android Pay||Kingdom of Tonga||February 23, 2015||August 21, 2015||May 28, 2015|
While large tech companies are perhaps the most frequent users of this process, anyone with the legal and financial resources can take advantage of this loophole. If you decide to use Section 44(d) to keep your trademark out of the public eye, there are several things to keep in mind:
Select a foreign country that does not have an online trademark database. We’ve assembled a list below based on our research—let us know if we’ve missed anything.
File in the foreign country no more than six months before you wish to file in the US and make your mark public.
Make sure to file within six months of your first filed foreign application in order to take advantage of US priority.
Remember to list all goods and services you anticipate filing for in the foreign application because you cannot add new goods and services to the 44(d) application.
Would you file in the Kingdom of Tonga or any of the other countries without publicly accessible filings? Do you use other strategies to keep your filings secret? What do you think about this loophole? Let us know in the comments!
Countries without a searchable online trademark database
|Bahamas||El Salvador||Malawi||Saint Vincent and the Grenadines|
|Bangladesh||Equatorial Guinea||Mali||Saudi Arabia|
|Central African Republic||Honduras||Pakistan||Trinidad and Tobago|
|Comoros||Ivory Coast||Papua New Guinea||United Arab Emirates|
|Democratic Republic of Congo||Lesotho||Qatar|
|Dominica||Liberia||Saint Kitts and Nevis|
Update #1: Both Apple and Google have recently filed new trademarks in the US that were previously hidden because they were filed in foreign IP offices that are not searchable online. Apple filed two applications for the mark “Cloudkit” on October 28, 2015. While Cloudkit was announced in 2014, these applications reveal that tech companies will continue to use the practice of filing abroad even when the product has been previously announced. The same is true with Apple’s recent filing for “Siri” in connection with watches and timepieces (i.e., Apple Watch).
On October 30, 2015, Google filed for “YouTube Red,” which they had publicly announced on October 28. The original application for this mark was filed in Trinidad and Tobago on August 27. Lastly, the two applications for “Apple Music,” which were filed and announced in June, are still in the registration process. One of the applications has been approved for registration and the other is awaiting a response to a non-final office action that was issued on September 26.
See the marks here:
Update #2: Apple and Google have been busy filing an array of trademarks since our last update. We have included a sample of some of the marks that were filed below. All of these marks were previously filed in Jamaica or Trinidad and Tobago before being filed in the United States.
On May 3, Apple filed for Swift Playgrounds, which will be used in connection with educational software for computer programming. On April 25, Apple filed for a mark related to Apple News, a feature they may be enhancing in the near future. Apple also filed for Pingfang, which will be used in connection with downloadable fonts, on December 1. Lastly, you may soon be visiting a Genius Grove, rather than a Genius Bar, when you visit the Apple store. Apple filed for that mark on January 22.
Google filed several marks all tied to environmental goods and services. Google filed for a service mark, to be used in connection with software that collects geographic and environmental data. Google also filed for Terra Bella, to be used with software that provides geospatial information and data about the Earth’s surface, as well as aerial imagery. Plus Zero is another new mark to be used for initiatives regarding lowering carbon emissions. Lastly, Weave will be used environmental monitoring and control devices.
Google also filed applications for some marks outside of the environmental sphere. They filed for Who’s Down on January 26, to be used with electronic messaging, and Verily on January 15, to be used with wearables in the medical industry. Google has a history of taking on moonshots, which are innovative and potentially risky projects. In fact, X, previously Google X, is a “moonshot factory,” facilitating projects like self driving cars and Wing, a drone delivery service. As Google continues to be involved in these ventures, you can expect even more interesting trademark applications in the future.
Update #3: Early 2017 has seen a busy start at the USPTO. On January 4th Zynga Inc. filed for a mark called Crosswords with Friends after originally filing in Trinidad and Tobago on October 28, 2016. Then, on January 13th, Intel Corporation filed for a mark called i360, a 360 degree light-painting photography app, after previously filing in Jamaica.
On January 18, Apple signaled their intent to compete with self-generating content streaming services like Netflix, Amazon, and HBO by filing for Vital Signs, an online television show that will likely be offered through Apple Music. The very next day, Apple filed another mark for an online show-series called Planet of the Apps. Both were originally filed in Jamaica on July 19, 2016. Brace yourself for Apple’s attempt at gaining market share in this highly disruptive and lucrative industry. Silicon Valley has made it clear that they are here to stay in the film industry as Amazon and Netflix were both was represented at the Oscars this year.
Finally, Google has confirmed its commitment to becoming a leader in VR technology with its filing of Daydream View on January 20, 2017 after originally filing in Tonga on July 26, 201
6. This VR headset and controller “lets you explore new worlds, kick back in your personal VR cinema, and play games that put you at the center of action.” See more here.
Update #4: A few weeks ago Google announced the pricing and eventual release date of their new cloud-based video game system, Stadia. The system itself was revealed to the public in March, and the announcement made it clear that Google is trying to become the next big player in the gaming industry by creating one of the first fully functional streaming services for video games. Google filed a trademark application for STADIA at the USPTO shortly after announcing the system in March, and the application claimed international priority on another application filed by Google in Tonga on January 16, 2019. This shows that Google is still taking advantage of these secret filings as an effective IP strategy.