We wrote in last month’s newsletter that filing trademark applications in foreign jurisdictions may have a strategic benefit to large companies in the United States, particularly for companies that desire to mask product development plans from the public eye while maintaining the priority date of an earlier foreign filing. Known as a “submarine” trademark, the key to the strategy is to do the initial filing in a country that does not publicly disclose trademark applications and then to surface the “submarine” by filing a U.S. trademark application based upon the foreign filing [Section 44(d) or 44(e)] when the company is ready to publicly disclose its product plans.

Foreign filings can be used to secure another benefit: stretching out the period by which the trademark owner is required to show proof of trademark “use” to the USPTO. So, if a trademark owner files a Section 1(b) intent to use US trademark application based upon a filing in a foreign jurisdiction under Section 44(e) of the Lanham Act, the applicant is not required to prove use of the trademark until the first renewal period, between the fifth and sixth year after the trademark registers. Had the Applicant taken the traditional route and filed an intent to use application only under Section 1(b), it would be required to file proof of use in three years (with extensions) after it is allowed, a shorter period of time. Let’s examine a real-life example of this strategy.

One of the greatest sprinters of all time is Usain Bolt. Now retired, he is an eight-time Olympic gold medalist. Many will call his distinctive celebratory pose at the 2000 London Anniversary Games, which is illustrated above. Over the years, Bolt has tried to capitalize on the pose by registering it as a trademark for various consumer goods, first in Jamaica and then subsequently in the United States, which has an obviously larger consumer market. Here is the mark:

Since 2011, Bolt has filed this trademark three times but could prove use for only one of the applications. The others were canceled for failure to prove use under Section 8 of the Lanham Act. In August of this year, Bolt tried again by filing a fourth application for his signature pose based upon his foreign registration in Jamaica, giving him yet another six years to develop and sell his products. By filing and re-filing trademark applications, the Applicant can maintain its foreign priority date and extend and re-extend the period for proving use of the trademark. Very handy, for foreign companies or individuals that have been unable or slow to launch their products in the United States. One caveat, of course:

[t]he foreign registration must be issued by a country that is a party to a treaty or international agreement with the United States. The foreign registration must also be from your country of origin, must be owned by you, the same named applicant who filed the U.S. application, and must be for the same trademark as in the U.S. application and for goods and/or services that are the same as or encompass the goods and/or services in the U.S. application.

Meet these requirements and you’ll get your registration.

— Adam G. Garson, Esq.