Those trademark practitioners whose clients include companies located outside of the US will be familiar with the so-called Section 44e filing basis. This is the filing basis that honors Article 6quinquies of the Paris Convention. It permits a would-be applicant in the USPTO to get a free pass (for six years) on having to prove use in commerce in the US. To qualify for this filing basis, and thus to get the six-year free pass, the applicant must establish that the same applicant earlier obtained a non-US trademark registration for the same mark. The goods/services identified in the registration are required to “cover” the goods/services identified in the US application. A further requirement is that the registration is required to come from the place that is the “country of origin” for the applicant. Finally, the registration needs to be valid and subsisting, and needs to have an expiration date far enough in the future to make it likely the US prosecution would reach is conclusion prior to the expiration date.
The problem is that the TEAS forms for such a US trademark application are actively unfriendly to many applicants, namely those applicants for which the office of registration provides cryptographically protected certificates of registration. I’ll explain.
By way of background, the US trademark office has taken many measures to try to force trademark applicants to carry out all of their communications electronically rather than on paper. Indeed a Notice of Proposed Rulemaking proposes to increase greatly the penalties that the trademark office would impose upon the applicant that submits a communication by other than electronic means.
Perfection of a 44e filing basis requires that the applicant hand in a copy of the registration certificate from the non-US trademark office. This permits the Examiner to work out whether the applicants are the same (as between the non-US registration and the US filing), and whether the mark is the same (as between the non-US registration and the US filing). This permits the Examiner to check that the non-US identified goods/services do in fact “cover” the US identified goods/services.
Because of the substantial penalties imposed by the Trademark Office for paper filing of documents, an applicant wishing to perfect a Section 44e filing basis will be under great pressure to submit the copy of the non-US trademark registration electronically rather than as a physical certified copy.
The TMEP permits the applicant to hand in a certified copy, but also permits the applicant to hand in a mere photocopy. In the e-filing world of TEAS, what this means is that the applicant is required to upload a PDF of the non-US trademark registration certificate.
More and more trademark offices around the world make it possible to obtain not only a mere PDF of a registration certificate, but in fact a cryptographically secured PDF file. This is of course a very good thing. The secured PDF cannot be tampered with. To the extent that the USPTO might worry whether an applicant might be tempted to tamper with (or “Photoshop”) a non-US registration certificate, the fact of a particular PDF file being secured eliminates that worry.
One example of a trademark office providing cryptographically secured registration certificates is the European Union Intellectual Property Office (EUIPO, formerly known as OHIM).
Put plainly, the TEAS form for a new US trademark application ought to be designed in such a way as to welcome the uploading of a cryptographically secured non-US registration certificate. The same would be true for any TEAS form that might be used for a later change of filing basis to Section 44e. The fact of an uploaded non-US registration certificate having been cryptographically secured would save the US Examiner from having to wonder whether the PDF file had been tampered with.
Instead, the TEAS form actively blocks the uploading of such a cryptographically secured registration certificate. The TEAS form displays this bounce message:
You must disable all security features (e.g., encryption, master passwords, and/or permissions) prior to uploading the PDF file to TEAS.
This means that if I am preparing a US trademark application with a 44e filing basis, I cannot upload the PDF registration certificate provided by the EUIPO. The TEAS system will bounce the registration certificate with the bounce message quoted above.
It turns out to be no easy trick to overcome this bounce behavior of the TEAS form.
You might think that you could just use Acrobat to open the PDF file, and go into the properties, and check or uncheck a box to turn off the cryptographic protection. But you would need to know a password to do this, and only EUIPO knows the password.
You might think that you could simply open the PDF file in Acrobat, and print it to CutePDF, and use that newly created PDF file. But that won’t work. Acrobat blocks the use of a print-to-file printer such as CutePDF for such a cryptographically protected file.
You might think that you could simply export the pages of the PDF file into one-page image files (like TIF or JPG files). And then reassemble the images files into a PDF. (Or just upload the JPG files into TEAS.) But no, Acrobat blocks the image export for such a crypographically protected file.
As far as I can see, the only way to satisfy TEAS is to physically print the cryptographically protected PDF file (from EUIPO) onto paper, and then run the paper through a scanner, to make a new PDF. That new PDF will be devoid of any cryptographic protections, thus satisfying the TEAS form.
This is nuts, and it is nuts on multiple levels.
It is nuts because it forces me to physically print something out and then physically scan it back into the computer. Any workflow that requires such physical printing out and then physical scanning is presumptively a nuts workflow.
It is nuts because it denies the US trademark Examiner the benefit of knowing that the non-US registration certificate is free from having been tampered with.
As just discussed, the TEAS developers designed TEAS so that if you try to upload a non-US registration certificate (to perfect a 44e filing basis), TEAS will puke if the certificate has been cryptographically protected. (Even though the USPTO should actually prefer to receive such a document in a cryptographically signed form.)
Another example of a thing that an applicant might wish to upload, and that might have been cryptographically protected, and that TEAS will puke on if it is cryptographically protected, is a priority document. An applicant wishing to perfect a 44d filing basis (under Article 4 of the Paris Convention) will need to upload a PDF copy of the priority application. And here, too, many trademark offices around the world nowadays provide a PDF copy of a priority trademark application as a cryptographically protected PDF file. Here, too, if the USPTO wanted to be smart about it, the USPTO would actively encourage the uploading of a cryptographically protected priority document. Here, too, what USPTO does instead is design TEAS to puke on the cryptographically protected priority document.
USPTO should make the TEAS forms friendlier, permitting applicants to upload cryptographically protected copies of non-US registration certificates and non-US priority applications.
Here’s a chance to win a prize! In this blog post I describe a trademark filing basis that gives an applicant a six-year free pass on having to prove use of the mark in commerce in the US, namely the 44e filing basis. But there is also one other filing basis that offers such a six-year free pass. The first reader to post a comment that correctly specifies that one other filing basis will receive a free copy of Bodenhausen’s book about the Paris Convention.