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Hi Carl,<br>
<br>
While I think you are 100% correct, the USPTO would beg to differ
with you one one of your points - that 44(d) is not a filing basis.
The USPTO says it is:
<a class="moz-txt-link-freetext" href="https://www.uspto.gov/trademarks/apply/basis#1">https://www.uspto.gov/trademarks/apply/basis#1</a>. See also TMEP
806.01(c) ("Section 44(d) of the Act provides a basis for receipt of
a priority filing date, but not a basis for publication or
registration.") When in Rome.<br>
<br>
Pam<br>
<br>
<div class="moz-signature">Pamela S. Chestek<br>
Chestek Legal<br>
PLEASE NOTE OUR NEW MAILING ADDRESS<br>
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El Dorado Hills, CA 95762<br>
+1 919-800-8033<br>
<a class="moz-txt-link-abbreviated" href="mailto:pamela@chesteklegal.com">pamela@chesteklegal.com</a><br>
<a class="moz-txt-link-abbreviated" href="http://www.chesteklegal.com">www.chesteklegal.com</a><br>
<br>
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<div class="moz-cite-prefix">On 1/27/2025 10:52 AM, Carl Oppedahl
via E-trademarks wrote:<br>
</div>
<blockquote type="cite"
cite="mid:d85d8823-dc95-4227-9960-c8750dc67be1@oppedahl.com">
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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/"
moz-do-not-send="true">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>
</p>
<br>
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