[E-trademarks] EUIPO and Benelux missing from Trademark Center
Carl Oppedahl
carl at oppedahl.com
Wed Jul 24 14:52:27 EDT 2024
This inspired a blog article:
https://blog.oppedahl.com/euipo-and-benelux-are-missing-from-trademark-center/
.
On 7/24/2024 12:25 PM, Kevin Grierson via E-trademarks wrote:
>
> 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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