[E-trademarks] very difficult to do both 44d and 44e?

[Carl Oppedahl]

Today I had a new task entrusted to me by non-US trademark counsel.  The 
goal was to get a US trademark application filed that would have a 44e 
filing basis tied to an already-granted non-US trademark registration, 
and that would also claim priority from the no-longer-pending trademark 
application that had matured into the already-granted non-US trademark 
registration.

As best I can tell from today's clicking around in Trademark Center, it 
is impossible to do this whilst giving truthful answers to the various 
questions posed by Trademark Center.

I did eventually manage to cobble together an application that I think 
might be what is needed.  But the only way I was able to do this was by 
answering various questions with false answers.

One of the challenges is that TC asks "do I have a foreign trademark 
application?"  And the true answer is no, I do not.  I did have one in 
the past, but it ceased to be a trademark application when it got 
registered.

So I had to lie and say that I still have a foreign trademark application.

Another reason that this question is a failure is that the foreign 
trademark application might have gone abandoned or otherwise ceased to 
be pending, for some reason other than the grant of a registration.  
Article 4 of Paris (see Bodenhausen 
<https://shop.oppedahl.com/product/guide-to-the-application-of-the-paris-convention/>) 
makes clear that there is no need for the would-be priority application 
to be /*copending with*/ the soon-to-be-filed US application.  Article 4 
makes clear that the priority claim works "whatever may be the 
subsequent fate of the [priority] application."

One of the ways that the developers of TC could have avoided getting 
this wrong is by asking the thing they really want to know, instead of 
asking some other question that is not really what they want to know.  
What they really want to know is "do I wish to claim priority from a 
foreign trademark application?"

Still another challenge is that a 44d priority claim is not actually a 
"filing basis".  It is merely a priority claim.

To file a US trademark application (by which we mean a thing that has a 
prospect of becoming a US trademark registration), it is necessary to 
have a filing basis.  The possible filing bases are 1a, 1b, 44e, and 
66a.   (And as we know, a 44e basis includes an understood 1b basis and 
a 66a basis likewise.)

To do what I needed to do, which is (a) file an application with a 44e 
filing basis, and (b) make a priority claim under 44d, what Trademark 
Center seems to require is that I do a couple of things.  First, I have 
to click on a place where I say that I would like to present more than 
one filing basis.  TC warns me that such a filing path is "extremely 
uncommon", the suggestion I guess being that I am probably mistaken to 
think that this is a sensible click path.  And then I have to say that 
one of my multiple filing bases is a mere priority claim (which is not 
actually a filing basis).  If I persist in this click path, TC makes me 
choose from among several possible representations, one of which is 
along the lines of "yes I really do wish to claim priority, and if my 
priority application never becomes a registration, then I guess I still 
wish to claim priority."   But given that elsewhere in the exact same 
draft US trademark application I have already uploaded the registration 
certificate for the foreign registration, it seems weird to be forced to 
acknowledge that my priority application even now might never become a 
registration.

It seems quite clear that the developers of TC never had a clue that 
there are trademark offices where a trademark registration might get 
granted promptly, less than six months after the underlying trademark 
application had been filed.

Again the normal easy click path and workflow through TC seems to 
contemplate that there might be a 44d priority claim or there might be a 
44e filing basis, /*but not both. */The screen where you might click 44e 
will lead to the 44d box getting unchecked if it had previously been 
checked, and on the other hand if you check the 44d box, this leads to 
the 44e box getting unchecked if it had previously been checked.

There are more evil things in the design of this part of TC. Let's 
suppose I click and click and click and eventually manage to upload my 
one or more foreign trademark registration certificates, along with the 
translations thereof, along with the many mouse clicks needed to match 
up each certificate with its associated goods or services.  And all of 
the keystrokes needed to say what country it is and the registration 
number and registration date and expected expiration date.  Let's 
suppose I have done all of that clicking.

And now let's suppose I get to a point where I realize that I had not, 
apparently, managed to get the priority claim into the case. So I click 
around and eventually get to where it looks like I will be able to add 
the priority claim.  (This the clicking where I have to lie and say that 
I have a foreign patent application when in fact I don't because it is 
registered.  And this is the clicking where I have to pretend that a 
priority claim counts as a "filing basis" which it does not.)  Okay, so 
the next click that I am required to make is a click that */discards all 
of my hard work to enter the 44e filing basis./*  I now get to 
laboriously re-enter absolutely everything about the 44e basis, 
including uploading two PDFs and hand-keying a variety of date and 
application number metadata.

By the way I have to imagine that the vast majority of 44e filings at 
the USPTO also include a priority claim to the exact same underlying 
trademark office.  In fact I'd guess it is rare that a would-be 44e 
filer is not also presenting that exact same priority claim.

Wouldn't it be nice if the developers of TC would have made it so that 
after the filer had laboriously entered the 44e claim, it would only 
take, say, a single mouse click to tack on the matching priority claim?  
But no, that would be expending time or energy doing something that is 
applicant friendly.  It is very clear from every screen, every click 
path, that the only goal of the developers of TC was to reduce work for 
USPTO personnel down the line.  To the extent that there are any 
validations of inputs, to the extent that any sequence of clicks is 
called for, it is solely to eliminate events or fact patterns that might 
otherwise have required some action by an Examining Attorney to 
straighten out at some later time.  It is solely to reduce work for 
USPTO personnel down the line.


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