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

[Michael Brown]

I assume from your post that your application only covered one class for
the 44e basis. Whereas TEAS allowed for an applicant to check one or more
boxes to assign a 44d or 44e basis to one or more classes of goods and/or
services, TC requires this step to be repeated for each class.

And, if for some reason you selected the wrong check box for a 44d claim
(saying that the applicant intends to rely upon the registration basis, or
that the applicant would rely on another basis instead of the registration
basis), there is no way to change that check box, other than to delete the
44d claim and start all over again (at least none that I could find).

IMHO, for practitioners, TC increases the work to file applications by at
least 150%, and that does not account for the surcharges and related
information. Has anyone done a webpage count comparison between the two?

Best regards,
Michael



Michael Brown
Michael J Brown Law Office
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Plaza I, 2nd Floor, Suite 2025
Livingston, NJ  07039
michaeljbrownlaw at gmail.com
michael at mjbrownlaw.com
www.mjbrownlaw.com
+1 973-577-6300  fax +1 973-577-6301
Google Voice +1 973-637-0358


On Mon, Jan 27, 2025 at 1:52 PM Carl Oppedahl via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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.
>
>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
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