Apple’s Secret Trademark Filing in Trinidad and Tobago

If you were among the millions of fans staying up-to-date on Apple’s September 9th new product announcement event, you probably had a few expectations. It was no secret that a new phone was on the way, and Apple’s entry into the wearable tech market was heavily rumored to be unveiled. And sure enough, it was – under the name “Apple Watch.”

Observers weren’t surprised at the watch itself, but the name actually raised some questions. For several years, the lowercase “i” prefix was the typical naming convention for most things Apple – iPhone, iPod, and so on. “iWatch” would have been a good bet for the name of the new device – but that wasn’t the case this time.

For most people, the name “Apple Watch” was a surprise. But if you happened to check the trademark filings on the tiny islands of Trinidad and Tobago about six months prior to the unveiling, you might have gotten an inside track. That’s because Apple filed a trademark registration there on March 11, 2014, for “Apple Watch.” Why?

Essentially, Apple wanted to keep the name under wraps for as long as possible, while also ensuring the maximum amount of trademark protection. Once you file a trademark application, it becomes a matter of public record, and for a major brand like Apple, the name would have been reported very quickly – which is at odds with their preferred method of revealing new products. However, there is a trademark rule for certain countries – the United States and Trinidad and Tobago included – whereby a foreign filing can serve as a “basis” for a domestic trademark application, so long as the domestic application is filed within six months.

As you can see, that March filing was no accident on the part of Apple, with a September Apple Watch unveiling planned. In fact, the Trinidad and Tobago filing was almost six months to the day prior to the event, giving Apple nearly the maximum amount of retroactive trademark protection.

Let’s take a bit of a closer look at Apple’s intentions and methodology here with regards to trademark law, and talk about why it’s important to get the maximum amount of protection for your brand and trademarks.

United States trademark law depends heavily on the issue of priority – who used a mark first. This is regardless of trademark registration status, although a registered trademark serves as an implicit proof of priority, giving the trademark owner the legal edge. When you’re a company like Apple, however, this legal edge may not deter people who may try to claim earlier usage of a mark. Ill-intentioned companies or individuals may try to illegitimately claim prior usage of a mark that Apple desires, in hopes of receiving a settlement.

Apple’s devotion to secrecy prior to official product announcements means that there’s no way they could claim “prior use” of a mark in commerce before the filing date. So it’s important to establish that priority as early as possible – while also doing so as quietly as possible.   The only other way to establish priority on a trademark without using it in commerce is to make a trademark filing.  By making this filing in Trinidad & Tobago, Apple ensured the priority on the ‘Apple Watch’ trademark as of the date of this filing (so long as they subsequently filed the US application within 6 months).  This gave Apple the best of both worlds – priority on the trademark in the US 6 months prior to any US announcement, and, the probability that no one from the media was watching the trademark filing database in Trinidad and Tobago.

The name “Apple Watch” as opposed to, say, “iWatch” or some other variation, is an indicator that Apple is recommitting to establishing their corporate name as a major part of their brand. In that light, it’s no surprise that they used trademark law to their advantage to protect the name of their new, high-profile product.

It’s true that the lowercase letter “i” prefix became associated closely with Apple and their products – but it wasn’t the exclusive domain of Apple itself. Other products and accessories for use with Apple products – but not manufactured by Apple itself – also sometimes had the lowercase “i” prefix – Apple wouldn’t be able to register just that letter that as a trademark on its own.

Lest you think that Apple’s hand has been tipped as the news of their March Trinidad and Tobago filing becomes common knowledge, remember that this is actually a common practice – and Apple has filed over 200 trademarks there over the years. There are also other countries that have the same relationship with the USPTO, where a filing there can serve as basis for priority in the United States. To borrow some famous (non-trademarked) Apple words, “one more thing:” Apple also filed a trademark in Japan for “iWatch” last year, perhaps to throw potential trademark opponents off the scent. It’s clear that Apple understands the importance of a well-protected trademark, and will continue to utilize trademark law to preserve the strength of their brand.

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

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