When to trademark your tech name

There are lots of ways to launch a new tech brand. But behind every brand launch is a brand name launch. And behind every brand name is a tricky tale of trademark timing, especially for a sector as dynamic as technology. So the potentially multibillion-dollar question is, when should a tech name be trademarked?

In more practical terms, should the kids in the garage — or the Stanford dorm room — file a trademark application with the US Patent and Trademark Office (USPTO) as soon as they’ve found a cool name for their awesome app? Not necessarily. “BackRub,” which in 1996 was the name of what became Larry and Sergey’s big adventure, was certainly not worth the filing fees or legal costs, and it was never filed with the USPTO. Even the name “Google” wasn’t filed until September 16, 1998, a full year after both google.com was registered and the name itself was first used in commerce, per USPTO filings.

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Not surprisingly, Google wasn’t the first company to lay claim to its name. “Google,” “Googles,” and even “Google-plex” are all in the USPTO database dating back to the 1960s. Some are still “live” trademarks for things like books and toys. Regardless, by the time Google was on its way to becoming … well, GOOGLE, it didn’t really need to worry about other search engines using its name. This is partly due to the concept of “common law,” which can provide name protection even if a USPTO application has yet to be filed.

That’s all well and good when a company is in its infancy and wants to prove itself as it grows. But what about an established company that’s been developing a super-stealth initiative for years? When should it file its name?

Names filed with the USPTO are public, so if you file a name before launching your stealth initiative, the whole world could learn the name well before you’ve properly launched. Alternatively, if you wait to file a name, a competitor could file the name first.

You can avoid such moments of despair by filing names well before you launch. But there’s a catch: Names filed with the USPTO must be accompanied by public descriptions that can divulge strategic information. The result can shine light where you may prefer shadow.

A case in point was Samsung’s name “IOT.js,” which it filed on March 26, 2015. Classified as an “intent to use” filing — which means a name is not yet being used “in commerce” — the name was accompanied by a massively long description of nearly 1,400 words. What’s more, IOT.js is a JavaScript filename, highly unusual as a trademarked name. And “IOT” is clearly a tip-off: This is about the Internet of things.

The detailed IOT.js filing led me to the following questions: How will Samsung use IoT.js? Will it be a platform? Or maybe a tiny file that’s shared among every software-enabled “thing” in SamsungWorld?

Due to the fact that Samsung hadn’t announced any additional information about the name, there was no way to know for sure. But four months later, on July 21, Samsung issued a press release indicating “Samsung Electronics Opens Development of IoT.js, an IoT Platform that Expands Interoperability to Lightweight Devices.”

My hypothesis turned out to be correct, almost to the letter. More important, however, Samsung’s IOT.js filing laid bare, wittingly or not, its entire IoT strategy months before it launched its platform. The only thing it took to uncover this strategy was a quick scan of the publicly and readily available USPTO database — and maybe a little bit of interpretation.

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Were I the CTO of a Samsung competitor, this peek behind the curtain could have provided me with invaluable advance information about where Samsung was headed — and potentially how to get there first. This filing also revealed something about Samsung: It has a tendency to overshare.

As evidence that such old habits die hard, on March 2, 2016 Samsung filed a trademark application for the name “Joiiii.” It’s described in part as “IPTV (Internet Protocol Television) set-top boxes [ and ] software applications for providing access to television and video programming via the Internet.” As with IOT.js, Samsung has not made public any additional information about the name. But it has again tipped its hand in yet another hot field: IPTV.

The USPTO teems with trademarks that were filed on the exact day their names were introduced to the world. “Amazon Echo,” “Amazon Prime,” and Apple “Retina” are but three examples. In a similar vein, Instagram filed its name the day before its V2.0 was introduced. And Twitter filed in April, 2007, just a month after it dominated SXSW for the very first time. These and many other companies know the tricks of the trade and how to not tip their hands. Samsung could learn a lot from them.

And if a Joiiii IPTV shows up in your favorite electronics store anytime soon, you read it here first.

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Jeff Schulz is associate director of naming at international branding firm Siegel+Gale.