[E-trademarks] EUIPO and Benelux missing from Trademark Center

Wed Jul 24 14:25:18 EDT 2024

Very odd.  I could see, if they had simply imported a list of countries, leaving Benelux and the EU off.  But Great Britain and all of the member nations of the UK?

I also note that Kosovo *does* have a trademark office, but as it is not a member of the Paris Convention or any other global trade or IP organization, it should not be possible to use a registration there to obtain a registration in the US (which is why, I assume, it is not included in the list of countries available in TEAS).

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 1:50 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: [E-trademarks] EUIPO and Benelux missing from Trademark Center

EXTERNAL EMAIL
On 7/24/2024 4:49 AM, Carl Oppedahl via E-trademarks wrote:
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 carried out a line-by-line cross-check of the two lists (TEAS and Trademark Center).  Here are the two lists of things that don't match.

Purported trademark offices that may be selected in TEAS, but not in Trademark Center:

  1.  American Samoa
  2.  Benelux
  3.  England
  4.  European Community - CTM
  5.  European Union Trademark - EUTM
  6.  Great Britain
  7.  Guam
  8.  Johnston Atoll
  9.  Navassa Island
  10. Northern Ireland
  11. Northern Mariana Islands
  12. Puerto Rico
  13. Scotland
  14. US Virgin Islands
  15. Wake Island
  16. Wales

Purported trademark offices that may be selected in Trademark Center, but not in TEAS:

  1.  Aland Islands
  2.  Antarctica
  3.  Congo, the Democratic Republic of the (note that this is not the same as "Congo")
  4.  French Southern Territories
  5.  Kosovo
  6.  New Caledonia
  7.  Niue
  8.  Norfolk Island
  9.  Paracel Islands
  10. Pitcairn
  11. Reunion
  12. Saint Helena, Ascension and Tristan da Cunha
  13. Saint Pierre and Miquelon
  14. South Georgia and the South Sandwich Islands
  15. South Sudan
  16. Svalbard and Jan Mayen
  17. Tokelau

As for the seventeen purported trademark offices that may be selected in Trademark Center, but not in TEAS, some are particularly baffling.  Paracel Islands, for example, is described in Wikipedia like this:

The ownership of the [Paracel] islands remains hotly contested. The People's Republic of China (PRC) on mainland China, Vietnam, and the Republic of China (ROC) on Taiwan all claim de jure sovereignty, although the PRC has had de facto control of the archipelago since the Battle of the Paracel Islands in January 1974.

I am pretty sure there is no trademark office operated by the Paracel Islands.

I am absolutely sure there is no Antarctica trademark office.

The focus of this study of course, is to identify trademark offices that ought to be selectable in Trademark Center but are missing.  This draws our attention to the sixteen offices that can be selected in TEAS but cannot be selected in Trademark Center.  It is easy to pick out three regional trademark offices that can be selected in TEAS but are missing from Trademark Center:

  1.  Benelux
  2.  European Community - CTM
  3.  European Union Trademark - EUTM

The second one (CTM) needs to be on the list for purposes of 44e but is probably not needed for 44d.  (More than six months have passed since the last time anybody filed a CTM application.)

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