[E-trademarks] three defects in Trademark Center

[Carl Oppedahl]

I can imagine that there may be one or two countries that literally do 
not have a trademark office.

On 7/24/2024 7:46 AM, Kevin Grierson via E-trademarks wrote:
>
> 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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> kgrierson at cm.law <mailto:kgrierson at cm.law>
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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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