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<p>Today I had a new task entrusted to me by non-US trademark
counsel. The goal was to get a US trademark application filed
that would have a 44e filing basis tied to an already-granted
non-US trademark registration, and that would also claim priority
from the no-longer-pending trademark application that had matured
into the already-granted non-US trademark registration.</p>
<p>As best I can tell from today's clicking around in Trademark
Center, it is impossible to do this whilst giving truthful answers
to the various questions posed by Trademark Center.<br>
</p>
<p>I did eventually manage to cobble together an application that I
think might be what is needed. But the only way I was able to do
this was by answering various questions with false answers.</p>
<p>One of the challenges is that TC asks "do I have a foreign
trademark application?" And the true answer is no, I do not. I
did have one in the past, but it ceased to be a trademark
application when it got registered.</p>
<p>So I had to lie and say that I still have a foreign trademark
application.</p>
<p>Another reason that this question is a failure is that the
foreign trademark application might have gone abandoned or
otherwise ceased to be pending, for some reason other than the
grant of a registration. Article 4 of Paris (see <a
href="https://shop.oppedahl.com/product/guide-to-the-application-of-the-paris-convention/">Bodenhausen</a>)
makes clear that there is no need for the would-be priority
application to be <i><b>copending with</b></i> the
soon-to-be-filed US application. Article 4 makes clear that the
priority claim works "whatever may be the subsequent fate of the
[priority] application." <br>
</p>
<p>
</p>
<p>One of the ways that the developers of TC could have avoided
getting this wrong is by asking the thing they really want to
know, instead of asking some other question that is not really
what they want to know. What they really want to know is "do I
wish to claim priority from a foreign trademark application?"</p>
<p>Still another challenge is that a 44d priority claim is not
actually a "filing basis". It is merely a priority claim.</p>
<p>To file a US trademark application (by which we mean a thing that
has a prospect of becoming a US trademark registration), it is
necessary to have a filing basis. The possible filing bases are
1a, 1b, 44e, and 66a. (And as we know, a 44e basis includes an
understood 1b basis and a 66a basis likewise.)<br>
</p>
<p>To do what I needed to do, which is (a) file an application with
a 44e filing basis, and (b) make a priority claim under 44d, what
Trademark Center seems to require is that I do a couple of
things. First, I have to click on a place where I say that I
would like to present more than one filing basis. TC warns me
that such a filing path is "extremely uncommon", the suggestion I
guess being that I am probably mistaken to think that this is a
sensible click path. And then I have to say that one of my
multiple filing bases is a mere priority claim (which is not
actually a filing basis). If I persist in this click path, TC
makes me choose from among several possible representations, one
of which is along the lines of "yes I really do wish to claim
priority, and if my priority application never becomes a
registration, then I guess I still wish to claim priority." But
given that elsewhere in the exact same draft US trademark
application I have already uploaded the registration certificate
for the foreign registration, it seems weird to be forced to
acknowledge that my priority application even now might never
become a registration.</p>
<p>It seems quite clear that the developers of TC never had a clue
that there are trademark offices where a trademark registration
might get granted promptly, less than six months after the
underlying trademark application had been filed.</p>
<p>Again the normal easy click path and workflow through TC seems to
contemplate that there might be a 44d priority claim or there
might be a 44e filing basis, <i><b>but not both. </b></i>The
screen where you might click 44e will lead to the 44d box getting
unchecked if it had previously been checked, and on the other hand
if you check the 44d box, this leads to the 44e box getting
unchecked if it had previously been checked.</p>
<p>There are more evil things in the design of this part of TC.
Let's suppose I click and click and click and eventually manage to
upload my one or more foreign trademark registration certificates,
along with the translations thereof, along with the many mouse
clicks needed to match up each certificate with its associated
goods or services. And all of the keystrokes needed to say what
country it is and the registration number and registration date
and expected expiration date. Let's suppose I have done all of
that clicking.</p>
<p>And now let's suppose I get to a point where I realize that I had
not, apparently, managed to get the priority claim into the case.
So I click around and eventually get to where it looks like I will
be able to add the priority claim. (This the clicking where I
have to lie and say that I have a foreign patent application when
in fact I don't because it is registered. And this is the
clicking where I have to pretend that a priority claim counts as a
"filing basis" which it does not.) Okay, so the next click that I
am required to make is a click that <b><i>discards all of my hard
work to enter the 44e filing basis.</i></b> I now get to
laboriously re-enter absolutely everything about the 44e basis,
including uploading two PDFs and hand-keying a variety of date and
application number metadata.</p>
<p>By the way I have to imagine that the vast majority of 44e
filings at the USPTO also include a priority claim to the exact
same underlying trademark office. In fact I'd guess it is rare
that a would-be 44e filer is not also presenting that exact same
priority claim.</p>
<p>Wouldn't it be nice if the developers of TC would have made it so
that after the filer had laboriously entered the 44e claim, it
would only take, say, a single mouse click to tack on the matching
priority claim? But no, that would be expending time or energy
doing something that is applicant friendly. It is very clear from
every screen, every click path, that the only goal of the
developers of TC was to reduce work for USPTO personnel down the
line. To the extent that there are any validations of inputs, to
the extent that any sequence of clicks is called for, it is solely
to eliminate events or fact patterns that might otherwise have
required some action by an Examining Attorney to straighten out at
some later time. It is solely to reduce work for USPTO personnel
down the line.<br>
</p>
<p><br>
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