Should the USPTO Delay Publication of Trademark Applications? (Part 2)

In a previous post, in reaction to Apple’s game of branding hide-and-seek, I introduced the idea of a delay in initial publication of new U.S. trademark applications.

As brief background, in March 2014 Apple filed a trademark application for the APPLE WATCH mark in Trinidad and Tobago.  Subsequently, Apple filed at least one U.S. application for APPLE WATCH claiming priority to the Trinidad and Tobago application (Application No 86389945).

This circuitous route to U.S. trademark protection kept Apple’s new watch phone brand name under wraps in the months preceding the product launch while preserving the company’s right to protect the trademark in the United States before the launch (U.S. trademark applications are immediately publicly available after filing, and tech blogs, etc. review U.S. trademark filings to glean companies’ branding plans).

I think this need to play branding hide-and-seek – the tension between getting a trademark application on file and controlling the public revelation of a new brand – should be eliminated.

My proposed solution is a simple one:  U.S. trademark law (or rules) should provide for a delay in initial publication of newly-filed U.S. trademark applications, i.e., a “blackout” period to maintain applicants’ confidentiality.

Instead of immediately making new trademark application data available on the U.S. Patent and Trademark Office (USPTO) web site, publication of the data would be delayed for a period of time.

I propose that the default confidentiality period be six months; the new trademark application data would become available and searchable in the USPTO trademark records six months after the filing date of the application.

That is a reasonable period of time that matches the Paris Convention priority period for trademark applications.  It would obviate the need for applicants seeking to maintain the confidentiality of their new brands and control the timing of their public release to find obscure IP offices in distant corners of the world in which to file their applications six months before their product launch date.

Of course, a couple of nuances and potential objections should be addressed.

First, there is the issue of the publication for opposition of U.S. trademark applications.  The USPTO provides the general public the opportunity to review trademark applications before they register and, if anyone believes they would be damaged by registration of a particular trademark application, to temporarily pause the process and file a Notice of Opposition to oppose registration of that application.

An essential step in offering this opposition opportunity is that, prior to registration, every application is published for opposition.  This includes a preliminary Notice of Publication, which alerts the applicant, and anyone else monitoring the status of the application, of the date of publication for opposition.

Any delay in initial publication of trademark applications cannot disrupt the opposition process, in particular, publication for opposition.  Accordingly, my proposal takes that into account and would provide that, if a Notice of Publication is to be issued for a U.S. trademark application prior to the default six-month initial publication date, then the application would initially publish, and its full data become available on the USPTO web site, the same date as the Notice of Publication is issued.

In other words, the initial publication date of a U.S. trademark application would be the earlier of (a) the date that is six months after its initial filing date; or (b) the date the Notice of Publication is issued.

Another objection is that a confidentiality “blackout” period would hinder trademark searching.  That is, pre-filing clearance for determining whether a putative applicant is able to freely use and protect a proposed mark would be less certain because a problematic trademark application could be missed during its “blackout” period and might later become public after the applicant files the new application based upon incomplete search results.

That would be a problem, but patent practitioners have been dealing with a similar problem for years.  This is because there is an analogue to my trademark proposal in patent law.  A U.S. patent application typically publishes 18 months after its initial filing date.

As any IP practitioner will tell you, the only certainty in IP practice is uncertainty.  Lawyers and their clients have to make decisions and execute on incomplete information all the time.  In my view, this is not a substantial drawback and the merits of this proposal outweigh its downsides.

The period of confidentiality in patent procedure is thought to be necessary because patent applications provide detailed disclosures of cutting edge technology, which may be of enhanced value to applicants when kept secret for a while.

It’s time to recognize that many brands are also of great value, and brand owners would benefit from a period of secrecy.  It’s time to bring trademark procedure in line with patent procedure to provide confidentiality for brand owners.

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This article was originally published on Eric's Green Patent Blog.