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

Wed Jul 16 23:01:01 UTC 2025

I am revisiting the point that Pam makes below about being able to file an application based solely on a 44(d) filing basis because I have a client complaining about needing to always file a 1(b) basis combined with the 44(d) basis since the USPTO has not been deleting the 1(b) basis when granting the 44(e) filing basis. I had always been under the impression that a 44(d) filing basis needs to be combined wit the 1(b) basis because of what TMEP § 806.03(h)    (“Effect of Substitution of Basis on Application Filing Date”) states:

When the applicant substitutes one basis for another, the applicant must meet the requirements for the new basis.  The applicant will retain the original filing date, provided that the applicant had a continuing valid basis for registration since the application filing date.  Unless there is contradictory evidence in the record, the USPTO will presume that there was a continuing valid basis for registration.   See 37 C.F.R. §2.35(b)(3)<https://tmep.uspto.gov/RDMS/TFSR/current#/current/r-d0bda52a-d9f8-4d1c-a2e2-6d4fa4defca3.html>; Kraft Grp. LLC v. Harpole, 90 USPQ2d 1837, 1841 (TTAB 2009) ; Karsten Mfg. Corp. v. Editoy AG, 79 USPQ2d 1783, 1789-90 (TTAB 2006). … If there is no continuing valid basis, the application is void, and registration will be refused.

I think that, like Carl, I had thought that the 44(d) filing basis was not a valid basis and I want to say that there was a time when a 1(b) basis could not be added to an application after the filing date so if the Sec. 44 basis failed, the application would need to be abandoned. I believe that changed in 2003 with a series of amendments to the CFR that implemented the Madrid Protocol. So there really is no need now to file a dual-basis 1b-44d application because the 1b basis could be added anytime before publication if the foreign registration will not issue (and after publication with a petition and subsequent republication). I also had not realized that a 44(d) priority claim could remain in an application and continue to grant the mark owner earlier constructive priority even if that foreign application never registered.

So a non-U.S.  applicant is in great shape once they satisfy the Section 44(d) filing basis, which is mainly asserting it within six months of the foreign application filing date, with the same mark, the same ownership and the same goods/services as the U.S. application, all of which just needs to be in place prior to approval of  the U.S. application.

Alex Butterman
Partner
DUNLAP<https://www.dbllawyers.com/> <https://www.dbllawyers.com/> BENNETT<https://www.dbllawyers.com/> <https://www.dbllawyers.com/> &<https://www.dbllawyers.com/> <https://www.dbllawyers.com/> LUDWIG<https://www.dbllawyers.com/>
211 Church St., SE; Leesburg, VA 20175
T: 703-777-7319  BIO<https://www.dbllawyers.com/attorney/alex-butterman/>
[A blue and yellow sign with a letter r  AI-generated content may be incorrect.]   [cid:image002.png at 01DBF678.CA6CADB0]
[A blue and white sign  AI-generated content may be incorrect.]<https://www.dbllawyers.com/empowering-innovators/>
This electronic message contains information from Dunlap Bennett & Ludwig PLLC and may be confidential or privileged. If you are not the intended recipient, any disclosure, copying, or use of the contents is prohibited. If you have received this e-mail in error, please notify us and delete the message without copying or disclosing it.

From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Pamela Chestek via E-trademarks
Sent: Monday, January 27, 2025 3:20 PM
To: e-trademarks at oppedahl-lists.com
Cc: Pamela Chestek <pamela at chesteklegal.com>
Subject: [EXT] Re: [E-trademarks] very difficult to do both 44d and 44e?

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
PLEASE NOTE OUR NEW MAILING ADDRESS
4641 Post St.
Unit 4316
El Dorado Hills, CA 95762
+1 919-800-8033
pamela at chesteklegal.com<mailto:pamela at chesteklegal.com>
www.chesteklegal.com<http://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.

-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250716/ed0c231c/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 11186 bytes
Desc: image001.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250716/ed0c231c/attachment.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image002.png
Type: image/png
Size: 27821 bytes
Desc: image002.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250716/ed0c231c/attachment-0001.png>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image003.png
Type: image/png
Size: 43331 bytes
Desc: image003.png
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250716/ed0c231c/attachment-0002.png>