Tuesday, February 20, 2018

Apple registers watch in T&T first

Consumers have been speculating on what United States tech giant Apple Inc would name its new smartwatch. Predictions that it would be dubbed iWatch were proven wrong when the company on Tuesday lifted the curtain on the wearable device: Apple Watch. But in fact, Apple had tipped its hand months earlier, planting clues thousands of miles away in a trademark office in Trinidad and Tobago, the Wall Street Journal has reported. On March 11, the company submitted a trademark application for “Apple Watch” in Trinidad and Tobago.

Why Trinidad and Tobago? Under US law, a company seeking to register a federal trademark starts to secure initial rights when it files an application with the United States Patent and Trademark Office. “If your company is the first to file a trademark application, your company is first in line to obtain the trademark registration in the United States,” says Josh Gerben, a trademark attorney in Washington, DC. It’s what he described in the WSJ article as a “first-come, first-served system”.

Here’s where Trinidad and Tobago enters the picture.

The nation and the US are signatories to an international treaty allowing applicants to secure rights in a foreign country and then transfer them over to their home country, WSJ stated.

Under the agreement, an applicant that files in Trinidad and Tobago has a six-month window to apply for the same trademark in the US without resetting the clock. In other words, if Apple applies for an “Apple Watch” trademark in the US by today, its application would be treated as if it were filed six months ago on March 11, the WSJ story stated. So if another company trying to acquire the same trademark filed its application in the US after that date, it would take a backseat to Apple’s.

So Apple got a head start in securing trademark rights for Apple Watch without the publicity that a domestic application would certainly generate.

A spokeswoman for Apple didn’t respond to a request for comment when contacted by WSJ.

Hemraj Dookie, who processes trademark applications for the intellectual property office of the Ministry of Legal Affairs in Trinidad and Tobago, told Law Blog that Apple has submitted more than 250 trademark applications over the years.

Before Apple fans start scouring trademark offices around the globe, they should take heed: Foreign trademark filings can also be red herrings. As WSJ earlier reported, Apple last year filed a trademark application for “iWatch” in Japan, leading many to assume the company had already settled on that name.