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

[Pamela Chestek]

Hi Carl,

While I think you are 100% correct, the USPTO would beg to differ with 
you one one of your points - that 44(d) is not a filing basis. The USPTO 
says it is: https://www.uspto.gov/trademarks/apply/basis#1. See also 
TMEP 806.01(c) ("Section 44(d) of the Act provides a basis for receipt 
of a priority filing date, but not a basis for publication or 
registration.") When in Rome.

Pam

Pamela S. Chestek
Chestek Legal
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www.chesteklegal.com

On 1/27/2025 10:52 AM, Carl Oppedahl via E-trademarks 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.
>
>
>
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