WEBVTT - Apple Takes on Trademark Sleuths Worldwide (Audio)

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<v Speaker 1>Steve Jobs had a pension for secrecy and a talent

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<v Speaker 1>for building up the public's interest until he introduced the

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<v Speaker 1>name of a new product. A classic is the two

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<v Speaker 1>thousand seven introduction of what has become Apple's largest business,

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<v Speaker 1>an iPod, a phone, and an Internet communicator, an iPod

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<v Speaker 1>a phone. Are you getting it? These are not three

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<v Speaker 1>separate devices. This is one device, and we are calling

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<v Speaker 1>it iPhone. Apple is still just as obsessed with secrecy,

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<v Speaker 1>but there have been leaks about the next iPhone that

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<v Speaker 1>will launch later this year. A stainless steel and glass body,

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<v Speaker 1>different screen technology, and a three D sensor that recognizes

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<v Speaker 1>your face. What we don't know its name. It's one

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<v Speaker 1>of Apple's most fiercely guarded secrets. It may be called

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<v Speaker 1>the iPhone X to celebrate its tenth anniversary, or iPhone pro,

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<v Speaker 1>but Tim Cook, following Job strategy, doesn't want anyone to

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<v Speaker 1>know for sure until he says that name on stage.

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<v Speaker 1>My guests are Michael Rishard, professor at Villanova University School

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<v Speaker 1>of Law, and Brian Conroy, a commercial and trademarks listitor

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<v Speaker 1>at Rennick's List. Michael, we've heard a lot about Apple

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<v Speaker 1>and it's patent wars, but not so much about trademark.

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<v Speaker 1>Explain the difference between a patent and a trademark. Sure

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<v Speaker 1>of patent is protection that you get on an invention

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<v Speaker 1>you have, and at protection excludes the world from using

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<v Speaker 1>that invention. A trademark, on the other hand, is more

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<v Speaker 1>of a creature of commerce. It's what you call your device,

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<v Speaker 1>or it can be a logo, or it can be

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<v Speaker 1>product packaging. But it's something that is distinctive to your

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<v Speaker 1>product that causes people to reckon knives that it's associated

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<v Speaker 1>with your product and not somebody else's. And Apple has

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<v Speaker 1>used techniques over the years to keep its product name secret.

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<v Speaker 1>Why what is the importance of filing for a trademark

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<v Speaker 1>and keeping it secret until launch? Well, the reason you

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<v Speaker 1>file for a trademark is to lock out other people

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<v Speaker 1>from filing on the same mark, and so that's why

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<v Speaker 1>you do it. The problem is, when you file for

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<v Speaker 1>a mark, the whole point of it typically is to

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<v Speaker 1>let the world know that you're doing it so nobody

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<v Speaker 1>else picks the same mark. However, if you are into

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<v Speaker 1>marketing and keeping your name secret, which Apple is not

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<v Speaker 1>every company is, but Apple is, then it's very difficult

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<v Speaker 1>to file your mark and also keep it secret so

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<v Speaker 1>that you can have the Steve jobs like we now

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<v Speaker 1>have to give you the iPhone reveal at an event

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<v Speaker 1>where everybody can do and awe. Brian, what's the current

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<v Speaker 1>approach used by Google, Amazon and other tech companies that

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<v Speaker 1>exploits a rule in the US Trademark Act. Um, Well,

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<v Speaker 1>it's a it's a rule that's not just in the

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<v Speaker 1>U S Trademark Act. It's a rule that comes from

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<v Speaker 1>a treaty dating back to the eighteen hundreds, and so

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<v Speaker 1>pretty much every country has something similar, and it basically

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<v Speaker 1>allows you to file for a trademark in one of

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<v Speaker 1>the countries that's a signatory to the Convention, and then

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<v Speaker 1>if you apply in another country that's also signed up

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<v Speaker 1>to the Convention, which as I say, most are, including

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<v Speaker 1>the US, then you have what would be a six

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<v Speaker 1>month priority window where your application in the US is

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<v Speaker 1>afforded the same dat of application as the application you

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<v Speaker 1>filed in the first country. So the technique that a

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<v Speaker 1>lot of the big corporations are using is to file

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<v Speaker 1>their first application, which is their priority application, in a

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<v Speaker 1>jurisdiction that doesn't have an online searchable database, so there's

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<v Speaker 1>no way for most people to know that the trademark

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<v Speaker 1>has been filed, and therefore they kind of get to

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<v Speaker 1>have their cake and eat it. They get the priority

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<v Speaker 1>date so that no one else is going to be

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<v Speaker 1>able to jump ahead of them, but they also get

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<v Speaker 1>the secrecy so that nobody knows they've done it, so

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<v Speaker 1>they can apply for their US trademark after they announce

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<v Speaker 1>whatever it's going to be, the iPhone X, but they

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<v Speaker 1>already have a date for filing for that from the

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<v Speaker 1>other country previously. So tell us what you did to

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<v Speaker 1>spoil Tim Cook's surprise names last year. Um, Well, what

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<v Speaker 1>I noticed was a pattern that Apple used. So as

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<v Speaker 1>I said, there there is a number of countries where

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<v Speaker 1>there are no online searchable databases. One of them is Jamaica.

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<v Speaker 1>And I noticed that in two thousands and sixteen two

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<v Speaker 1>two thousand and sixteen, nearly all of Apple's secrets, if

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<v Speaker 1>I could ca of that, trademarks were filed in Jamaica

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<v Speaker 1>as a priority filing date, and then the US application

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<v Speaker 1>followed sometime within the next six months. So I said

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<v Speaker 1>to my boss, I've got a crazy idea. UM, I

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<v Speaker 1>think I can find out the names of the next

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<v Speaker 1>Apple products that are going to be launched at the

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<v Speaker 1>big launch event coming up, and I want to hire

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<v Speaker 1>a local agent in Jamaica to go into the Jamaican

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<v Speaker 1>trademark office and do a local search and see if

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<v Speaker 1>I can find any filings there that suggest what the

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<v Speaker 1>next names are going to be. And you found them,

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<v Speaker 1>I did, yeah, well, well sort of, yeah, I found

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<v Speaker 1>the iPhone seven and iPhone seven plus, which were announced

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<v Speaker 1>at the next event. But then the touch bar and

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<v Speaker 1>some of the other products like EarPods weren't announced for

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<v Speaker 1>another and maybe three or four months after that. But yeah,

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<v Speaker 1>there was There was fifty seven I think trademarks that

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<v Speaker 1>have been filed in Jamaica that that hadn't been announced yet.

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<v Speaker 1>If I could put it like that in thirty seconds,

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<v Speaker 1>and we will continue with with more of this, Michael.

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<v Speaker 1>But why is it so important? These names are not

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<v Speaker 1>exactly surprising names or inventive names. Why the intense secrecy

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<v Speaker 1>around them. Well, Apple likes to keep everything about its

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<v Speaker 1>product launch secret. It likes to keep product details secret,

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<v Speaker 1>and so it's got protected. You know, it's gone after

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<v Speaker 1>people who leaked that data, and so the name is

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<v Speaker 1>also very important, and so I think it's part of

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<v Speaker 1>an overall plan so that even though the iPhone seven

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<v Speaker 1>is not terribly uh secret, uh, you know, surprising that

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<v Speaker 1>other ones might be. And so they really want to

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<v Speaker 1>keep a stream going. We're talking with Michael Risch, professor

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<v Speaker 1>at Villanova University School of Law, and Brian Conroy, commercial

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<v Speaker 1>and trademark solicitor at Rennick Solicitor about Apple's quest to

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<v Speaker 1>have the names of its iPhones and other products secret

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<v Speaker 1>until the reveal comes on stage. Michael, we just heard

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<v Speaker 1>about how um Brian got the information ahead of time

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<v Speaker 1>from the Jamaica Trademark Office, and then the Jamaica Trademark

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<v Speaker 1>Office changed its its rules and and the way it

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<v Speaker 1>did things in order to help to keep things more private.

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<v Speaker 1>But what interest do trademark offices haven't keeping secrecy? Isn't

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<v Speaker 1>the reason they have these databases is for the public

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<v Speaker 1>to be able to review them. Right that It's it's

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<v Speaker 1>a mixed bag. So the political economy here is pretty clear.

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<v Speaker 1>Jamaica is getting these filings, uh, and so it wants

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<v Speaker 1>to keep getting the filings, and therefore it's going to

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<v Speaker 1>do things that helped to keep getting the filings. On

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<v Speaker 1>the other hand, if you clamp down on searches too much,

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<v Speaker 1>then you're basically useless as a as its trademark office.

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<v Speaker 1>That said, the types of searches most trademark applicants do

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<v Speaker 1>are not the types of searches that people are doing

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<v Speaker 1>when they're trying to figure out what Apple is going

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<v Speaker 1>to name its new product. That kind of a search

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<v Speaker 1>is sort of a broad exploratory search. You're looking for

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<v Speaker 1>searches within a certain time period. You're looking for searches

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<v Speaker 1>filed by certain companies, maybe with certain lawyers, but you

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<v Speaker 1>don't because you're looking for shell companies. But you don't

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<v Speaker 1>need any of that. If you're searching a trademark office

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<v Speaker 1>just to see whether you're infringing somebody's trademark, all you

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<v Speaker 1>really need to do is search on the name that

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<v Speaker 1>you're interested in using, and Jamaica allows you to do that.

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<v Speaker 1>If you come up with new widget two point oh,

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<v Speaker 1>you can say to Jamaica, I want to see if

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<v Speaker 1>anybody else's trademarked widget two point oh, and they say, no,

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<v Speaker 1>nobody has, and you can file your trademark. Uh. But

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<v Speaker 1>that doesn't help very much when you're trying to guess

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<v Speaker 1>what Apple is going to name their next product. Unless

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<v Speaker 1>I guess you could ask them, hey, I want a

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<v Speaker 1>trademark iPhone ten? Is anybody trademark that so? So? Brian?

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<v Speaker 1>How is it now very difficult or impossible if it's

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<v Speaker 1>a Jamaican filing to figure out what the next name

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<v Speaker 1>is going to be if it's filed in Jamaica. I

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<v Speaker 1>think the answer is yes, because, as the other guys mentioned,

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<v Speaker 1>unless you speculatively search for iPhone X or for anything

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<v Speaker 1>you think it might be UM, then you're not gonna

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<v Speaker 1>be able to find it. So what I did previously

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<v Speaker 1>was exactly as he said. I did a search for

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<v Speaker 1>all trademarks filed by Apple in the six months prior

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<v Speaker 1>to their launch event, and I got a list of

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<v Speaker 1>them all. And you just can't do that anymore, I

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<v Speaker 1>would say, just on the iPhone thing, they don't always

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<v Speaker 1>register the iPhone name. So they've iPhone seven and seven

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<v Speaker 1>plus registered I think four C and six, but not

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<v Speaker 1>all of them, which they don't need to do because

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<v Speaker 1>once they have iPhone in the bag, the number that

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<v Speaker 1>comes after it isn't that important from a trademark point

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<v Speaker 1>of view. Did they ever go after you? Did anyone

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<v Speaker 1>fin any lawsuit again? You or anything? God, I hope not.

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<v Speaker 1>Well if if, if this is a surprise way of

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<v Speaker 1>telling me I'm being served. No, I just wanted to

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<v Speaker 1>know they don't like leakers. And well it's not a

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<v Speaker 1>leak though everything that I published as a matter of

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<v Speaker 1>public record, you see, there's nothing wrong with us. I mean,

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<v Speaker 1>just because the way the Jamaican office works. I mean,

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<v Speaker 1>if you file an application in the States, everyone will

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<v Speaker 1>be able to see it about four days from now,

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<v Speaker 1>even though you won't get it for possibly months. In Europe,

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<v Speaker 1>it's even quicker. If you file an EU application now,

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<v Speaker 1>in about two hours, anyone will be able to find it,

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<v Speaker 1>so you know it's there at the time. At least

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<v Speaker 1>it wasn't against the rules of the office. So no, no,

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<v Speaker 1>there's been nothing. Okay, So, Michael, you were talking about

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<v Speaker 1>Apple's history of going after leakers. Is there besides this

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<v Speaker 1>reveal that they want to do on stage? And as

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<v Speaker 1>I mentioned, the names that they've come up with, some

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<v Speaker 1>are not really all that inventive in my mind. But

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<v Speaker 1>is there an effect of an early reveal of the

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<v Speaker 1>name on foreign markets? There can be, but only if

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<v Speaker 1>they didn't file um, only if they didn't file for

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<v Speaker 1>the trademark rights, which sometimes you hear about. So some

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<v Speaker 1>foreign markets are register only in the US you have

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<v Speaker 1>to actually have an intent to use or actually be

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<v Speaker 1>using the mark in order to get protection for it.

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<v Speaker 1>But in China, for example, you can register a mark

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<v Speaker 1>whether or not you have any intent to use it,

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<v Speaker 1>and within you have like three years to show whether

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<v Speaker 1>you're using it or not. And so what you find

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<v Speaker 1>is that if people are not careful about registering and

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<v Speaker 1>their name gets out, then somebody else can beat them

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<v Speaker 1>to the punch. Now, for Apple, the the real problem

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<v Speaker 1>would be is if the name leaked out before they

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<v Speaker 1>filed it with some trademark office somewhere, because even China

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<v Speaker 1>is a member of the Paris Convention and we'll give

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<v Speaker 1>you priority to your foreign filing. But if the name

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<v Speaker 1>leaked out even before then, uh, then somebody could rush

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<v Speaker 1>to China and file trademark application and this has been

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<v Speaker 1>known to happen, lock basically lock US companies out. Well,

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<v Speaker 1>I'm going to be very disappointed if it's called iPhone

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<v Speaker 1>X or iPhone pro because those are the names that

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<v Speaker 1>have been have been around. Thank you both so much.

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<v Speaker 1>It's been very interesting. That was Michael Rish she's a

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<v Speaker 1>professor at Villanova University School of Law and Brian Conroy's

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<v Speaker 1>Commercial and trademark solicitor at Rennick Solicitor