Alice Xie is an IPilogue Writer and a 1L JD Candidate at Western University’s Faculty of Law.
For die-hard Apple fans who were quick enough to get their hands on an iPhone 14 Pro or iPhone 14 Pro Max upon their release in early September, a new feature would have come as a pleasant surprise. Apple users have been dissatisfied with the “notch” — the black space sinking into the top of the screen. With the latest release, Apple introduced a new feature called “Dynamic Island,” which is a smart tool that enhanced the notch. Apart from being an interactive upgrade, Dynamic Island has an interesting connection to Jamaica. Interestingly, Apple first filed the trademark for Dynamic Island with the Jamaican Intellectual Property Office (“JIPO”) back in July before filing it in the U.S. the day the new iPhones became available for pre-order.
The Logic Behind it
How was Apple able to do this? The United States Patent and Trademark Office (“USPTO”), the governing body for national trademarks, accepts foreign trademark applications as a valid basis for filing for the same trademark in the U.S. Specifically, section 44(d) of the Trademark Act of 1946 allows applicants to claim a priority filing date of a trademark if they file the application with the USPTO within six months of the first application in a foreign treaty country. In this case, Apple filed the trademark application for Dynamic Island on July 12, 2022, in Jamaica, a member of the Paris Convention which recognizes the right of priority. This filing acted as a placeholder for Dynamic Island’s trademark until Apple eventually filed an application with the USPTO for the feature.
Now, why Jamaica? All thanks to the JIPO’s process for trademark search. Individuals or companies wanting to perform a trademark search in Jamaica must pay the JIPO a visit in person. In comparison, the USPTO’s trademark search process is significantly more accessible. Using the USPTO’s Trademark Electronic Search System, anyone can perform a search for free to see all the information of national trademark filings. Apple’s filing choice with the JIPO makes sense here. Individuals or companies must take a trip to Jamaica to find new trademark applications filed by Apple – a costly and timely effort. With the JIPO’s practically unsearchable database, Apple has a six-month window to hide its newest developments from the eyes of competitors and the curious public until, if it wishes, the product release day. By combining sections 1(b) intent to use the trademark in the U.S., and 44(d), Apple filed a trademark application for Dynamic Island with the USPTO on September 9, 2022, with a priority claim date of July 12, 2022.
It is not just Apple
Apple has a history of filing trademark applications in foreign jurisdictions going back to as early as 2010, but is not the only company with knowledge of this strategy. The trademark filing history of other technology giants like Google, Microsoft, and Amazon shares the same pattern as Apple’s, but in different foreign jurisdictions. Google, for example, first filed the trademark application for Google Chromecast in the Kingdom of Tonga on June 5, 2013 before filing it with the USPTO a month and a half later. Jamaica seems to be just one of many jurisdictions without a searchable online trademark database.
Loophole or fair strategy?
The method of foreign trademark filing raises the question of whether it is, on an extreme end, an exploitation of trademark law that regulatory bodies should address, or a perfectly legal strategy for those that are willing to spend the time and money to protect their privacy of developments. One concern is that smaller companies in the U.S. without the means to exploit this method cannot enjoy this competitive advantage as technology giants could. On the other hand, perhaps not all companies deem a six-month window of privacy valuable enough to pursue this lengthy process. After all, not many corporations have such high-stakes patents that receive widespread publicity. Thus, this strategy may not ever be sufficiently employed to be of concern.
