Trademarks of the Future: What a Company’s Trademark Filing Do (and Don’t) Tell Us About a Company’s Future Plans

By Josh Gerben, Esq.

Everyone wants an early “scoop.” From journalists to excited fans to Wall Street investors, savvy researchers use public data to try to peak into the plans of companies from many different industries from video games to tech releases. Like other public data, a company’s trademark filings with the United States Patent and Trademark Office are available for everyone to see.  For this reason, news reports, comment sections and forums are often full of analysis on the latest trademark filings by a company like Nintendo, Tesla, Apple and more to try to determine what is coming next. No doubt we can find out a lot about a person or company by their trademark filings, but be aware, there are many reasons why one might file a trademark. While trying to get a glimpse into a company’s future offerings is always interesting (and crucial for some, like investors or competitors) researchers should never fully rely on a trademark filing to show the complete picture.

With the speed that we can receive updates and information, it’s no wonder that companies try their best to hide their upcoming plans. With the increase in “watch services” and other tools that help scour government databases, companies (and their law firms) have developed multiple tricks up their sleeves in order to stay under the radar while they develop a brand and time the release of information.

Trademark Applications are Public Record in the United States

Typically, a trademark application filed with the United States Patent and Trademark Office (USPTO), will become publicly available in 4-5 days and will be searchable at tess2.uspto.gov. In fact, the USPTO requires each applicant to read the following:

All information you submit to the USPTO at any point in the application and/or registration process will become public record, including your name, phone number, e-mail address, and street address. By filing an application, you acknowledge that YOU HAVE NO RIGHT TO CONFIDENTIALITY in the information disclosed. The public will be able to view this information in the USPTO’s on-line databases and through Internet search engines and other on-line databases. This information will remain public even if the application is later abandoned or any resulting registration is surrendered, cancelled, or expired. To maintain confidentiality of banking or credit card information, only enter payment information in the secure portion of the site after validating your form. For any information that may be subject to copyright protection, by submitting it to the USPTO, the filer is representing that he or she has the authority to grant, and is granting, the USPTO permission to make the information available in its on-line database and in copies of the application or registration record.

Once an application is filed, it does not take long for a consumer (or competitor) to find out the name of the trademark under consideration and the specific goods and services that company intends to use the trademark on.  For example, Ford Motor Company filed a trademark application for “Nautilus,” tipping competitors off to a potential name for an upcoming vehicle.

Staying “Under the Radar”

However, these filings do not tell the whole story. A company may reserve rights when it has an “intent to use” the trademark in the United States, but an “intent to use” is a fairly low bar. The filing could be one of a dozen potential names under consideration. While questionable from an ethics standpoint, it could also be a “smokescreen” or a decoy to throw off competitors or others trying to gain an advantage from guessing the company’s next moves.

Sometimes, companies will take advantage of trademark treaty obligations to gain a head-start. For example, under the Paris Convention, applicants may use the filing date of a trademark filing made in one of the treaty member countries. Through this system, as long as an applicant has filed for their trademark in the US within six-months of applying in a foreign country, their application in the United States will be treated as if it was filed on the same date as the first country.

Why would this be a useful strategy? Well here is the tricky part – some countries do not have an online searchable database (examples include  the Bahamas, Ecuador, Trinidad and Tobago, Peru and Venezuela). Therefore, it can be extremely difficult for someone to monitor these databases like they do in the United States. It would be much harder to find this filing before the company was ready to share it. Apple proved this approach to be successful when they applied for the Apple Watch trademark in Trinidad and Tobago before filing in the United States. Apple was able to control the release of information to coincide with its own marketing plans, instead of being at the whim of the federal trademark databases public filings.

Another trick companies will use is to file through a shell company. Companies will file a trademark under a shell company or largely unknown subsidiary to throw everyone off. Companies will even go as far as using a different law firm or attorney to file the applications. Apple is linked to at least one shell company, Brightflash USA LLC. They used this shell company to file a trademark registration for iWatch, and then later had it assigned to Apple Inc.

An individual, specifically a public figure, may use their trademark filing as a publicity stunt. Recently, it is believed that Gene Simmons did just that. In June of 2017, Gene Simmons filed a trademark application for the “devil horns” hand gesture, better known as the “rock on” hand signal. It was believed to be a publicity stunt not only because he abandoned the application not even a month after filing, but due to the multiple flaws in the application. One of the most prominent issues being that he filed the trademark for the “rock on” hand gesture with the left hand. The evidence, or specimen, that he provided to the USPTO was a picture of him making the hand gesture with his right hand.

While these strategies can be effective to keep a company’s plans concealed, the filings themselves can be subject to many, many pitfalls. For example, if a company files too early, or cannot establish even the low bar of an “intent to use” then the resulting registrant could be void and would be subject to cancellation. Further, “chain of title” issues, meaning the evidence that a specific piece of intellectual property was properly transferred from one company to another can lead to dozens of issues if not handled properly. If a company is considering one of these approaches or wants to know the best way to protect their trademarks, they should consult an experienced trademark attorney to create a customized plan on the best way to proceed.

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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.