[E-trademarks] three defects in Trademark Center

Wed Jul 24 09:46:36 EDT 2024

And wouldn’t a “list of all countries” potentially include countries that are not members of the Paris Convention or other treaty with the US, and thus ineligible for a grant of trademark registration under Section 44?  (I confess that I’m not aware of any particular country that would be ineligible under this standard).

Kevin Grierson
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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Carl Oppedahl via E-trademarks
Sent: Wednesday, July 24, 2024 6:50 AM
To: for trademark practitioners <e-trademarks at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: [E-trademarks] three defects in Trademark Center

EXTERNAL EMAIL

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.
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