[E-trademarks] three defects in Trademark Center

[Michael Brown]

I have only used TC for one simple application with a US owner, but based
on Carl's email, I did a test run and can confirm that EUIPO is NOT an
option for a 44d application.

As for entity types, noting how some Examining Attorneys treat Appendix D
of the TMEP as a restrictive list, the failure to include common non-US
entity types in TC will likely result in unnecessary office actions.

Michael Brown
Michael J Brown Law Office
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On Wed, Jul 24, 2024 at 6:50 AM Carl Oppedahl via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> For a second time now I have attempted to use Trademark Center instead of
> the more usual TEAS for the preparation of a US trademark application.
>
> For a second time, so far as I can see, Trademark Center is unusable.
>
> For a second time, I have been forced to go back to TEAS.
>
> Here are the three defects that blocked my ability to use Trademark Center
> today.
>
> First, a false statement in the web-based system as to a requirement about
> actual use for a 44e filing basis:
>
> Identify goods and services for Section 44(e)
> You must be using the trademark in commerce for all the goods and services
> listed in your application.
>
> I believe that it is false to say that in an application with a 44e filing
> basis, it is required that the applicant "be using the trademark in
> commerce for all the goods and services listed in your application."
> Instead, the law requires nothing more than a *bona fide* intention to
> use the trademark in commerce for all the goods and services listed in the
> application.
>
> Second, when the time came to enter the details of the 44e filing basis,
> so far as I could see it is impossible to set forth that the filing basis
> is a registration *granted by the European Union Intellectual Property
> Office*.  So I was forced to go back to TEAS since TEAS does recognize
> EUIPO as a selection for the 44e office of earlier filing.
>
> This is a sad repeat of a blunder made by the developers of Patent
> Center.  With Patent Center as released, it was impossible to claim
> priority from a prior application filed in EPO (or in any other regional
> patent office).  It was clear in the case of Patent Center that the
> developers stupidly just clicked around on the Internet for some list of
> "all of the countries in the world" and copied and pasted that list into
> the line of code that generated the drop-down list of would-be priority
> Offices.  Of course the developers of Patent Center, who promised that they
> were going to replicate all of the functions and features of EFS-Web,
> should have done a simple code review of that part of EFS-Web and would
> have seen that the drop-down list included some places *that are not
> countries*.  The European Patent Office is not a country.  But the
> developers of Patent Center had no clue that the EPO is not a country, or
> that a customer of the USPTO might need to claim priority from the EPO.
>
> It took some weeks but eventually the developers of Patent Center paid
> attention to our bug report from the Patent Center listserv, and they fixed
> their mistake.
>
> So here, too, what has apparently happened is the developers of Trademark
> Center stupidly just clicked around on the Internet for some list of "all
> of the countries in the world" and copied and pasted that list into the
> line of code that generates the drop-down list of would-be Offices for a
> 44e filing basis.   Of course the developers of Trademark Center, who
> represent to us that they are supposedly replicating all of the functions
> and features of TEAS, should have done a simple code review of that part of
> TEAS and would have seen that the drop-down list included some places *that
> are not countries*.  The European Union Intellectual Property Office is
> not a country.  But the developers of Trademark Center have no clue that
> the EUIPO is not a country, or that a customer of the USPTO might need to
> list EUIPO as a 44e filing office.
>
> I did not trouble myself to go and look but I assume the developers of
> Trademark Center made the same blunder for the drop-down list of would-be
> 44d filing Offices.
>
> The third defect in Trademark Center is the failure to provide all of the
> relevant entity types in the relevant drop-down list.
>
> In TEAS, when we get to "the entity is a non-US entity", what happens next
> is that we get a drop-down list of non-US entity types.  On that drop-down
> list is, for example, "Société à responsabilité limitée" (initialized as
> "SARL").  The drop-down list has some seventy or so types of non-US entity.
>
> In TEAS, we have been begging for years that the drop-down list for no-US
> entity types would have a first selection for the non-US country, and then
> based on this selection of country, we would *subsequently *be given a
> drop-down list of the entity types *for that country*.  I imagine now
> that Trademark Center is in front of us, we will never get this wish for
> TEAS because probably TEAS has one foot in the grave.
>
> But I digress.
>
> In Trademark Center, once the filer clicks to say that the entity type is
> a non-US entity, the drop-down list fails to provide "Société à
> responsabilité limitée".  The drop-down list also fails to provide about
> sixty-eight other types of non-US entity.  Instead, the filer is forced to
> enter "Société à responsabilité limitée" into a free-form data field.
>
> Of course the developers of Trademark Center, who represent to us that
> they are supposedly replicating all of the functions and features of TEAS,
> should have done a simple code review of that part of TEAS and would have
> seen that the drop-down list for non-US entity types included *some
> seventy entity types.*
>
> Instead this particular defect in Trademark Center is going to lead to
> endless opportunities for random variations in the stated non-US entity
> type.  We will see filers who capitalize some letters and not others.  We
> will see filers who enter the accent characters and others who do not enter
> the accent characters.  We will see filers who enter an acute accent as a
> grave accent and vice versa.  There will, henceforth, be no consistency at
> all in the entries for non-US entity types.
>
> I invite comments from listserv members on these three defect reports.
> Maybe for each of the defects as reported, it is not really a defect
> because I missed some detail of Trademark Center.  Maybe for one or more of
> the defects as reported, there is some workaround that I missed.
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
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