There have been at least 343 instances in which Apple took advantage of section 44(d) of the US Trademark Act to keep its trademark filings confidential for a period of six months, Quartz reported Monday in an interesting write-up titled “Why Jamaica knows about Apple’s new products before the rest of the world”.
The article explains that Apple files trademark applications in places where these databases are not searchable online, via shell companies to conceal its identity and six months before applying for the same trademark in the U.S.
Apple has used this technique in the past to make secret trademark filings for Siri, the Apple Watch, macOS and dozens of other major products months before the equivalent paperwork was lodged in the United States.
A provision in section 44(d) of the US Trademark Act permits U.S. companies to lodge a trademark with an intellectual property office overseas, in which case the firm has six months to file it with the US Patent and Trademark Office.
The practice is evidenced in some of Apple’s USPTO filings, which point to their original filing made abroad to show that it has a priority claim on the mark. But what’s stopping anyone from browsing Apple’s filed trademark paperwork in the database of the Jamaican intellectual property authority?
For starters, filings made with the Jamaica Intellectual Property Office are not easy to access over the Internet. In fact, you must actually fly to Jamaica because the organization only allows visitors to search filings in person at its office in Kingston.
From the report:
People can also ask the office to search filings for them, but a Jamaican address is required to receive the results, and the process takes three weeks. A lawyer in Jamaica, however, can be appointed to perform the search, the office told Quartz. It said it has no current plans to put its filings database online.
Former United States Patent & Trademark Office examiner Roberto Ledesma explained back in April 2014 that Apple and others use the specific provision in section 44(d) of the US Trademark Act to lodge foreign trademark filings as a way of keeping them secret.
According to Nehal Madhani of legal software provider Alt Legal, only the richest companies use this provision due to high expenses. A chart below shows you where technology giants Apple and Amazon register trademarks before the United States.
“I haven’t seen this technique applied in a really pervasive way—I think it’s quite an obscure approach,” he said. “It’s generally going to be used by companies with real legal resources and the willingness to spend to protect something for six months.”
Alt Legal counted 65 countries with offline trademark databases like Jamaica’s.