Article 6quinquies of the Paris Convention provides a filing path by which certain kinds of trademark applicants in the USPTO can rely upon previous filings outside of the US. This path is sometimes called a “44e” path, from section 44(e) of the Lanham Act (15 USC § 1126). An applicant making use of this filing basis is required to provide to the USPTO a copy of a registration certificate from the applicant’s home country (a country outside of the US). The way this gets done these days is by means of the e-filing system called TEAS. And the design of the TEAS system for this function is foolish, as I will describe. The foolish thing is that the TEAS system pukes on certified copies of registration certificates from the EUIPO.
To fully describe the foolish thing in the TEAS system, I need to provide a bit of background.
Normally to obtain a US trademark registration certificate, the applicant is required to show present-day use in commerce in the US of the mark upon the identified goods and/or services. Once the mark is registered, a six-year counter starts counting, and before six years has passed the registrant must once again (for a second time) show present-day use in commerce in the US.
But there are two ways that certain kinds of applicants in the USPTO can get a free pass on that first requirement of showing present-day use in commerce in the US. The two ways are:
- arrive at the USPTO by means of a designation of the US in an International Registration under the Madrid Protocol, or
- make use of the 44e filing path.
If the applicant’s way of obtaining a US trademark registration results from either of these two paths, then the applicant is able to foot-drag the filing of a Statement of Use until almost the end of the above-mentioned six-year period.
This blog article talks about a foolish thing that presents itself in the way the TEAS system handles the 44e filing path.
The background for section 44(e) of the Lanham Act is that an entiy’s “country of origin” might be outside of the US. If so, then what further might have happened is that the entity might have applied for and have obtained a trademark registration in the trademark office in that country of origin. If so, then the entity can file a trademark application in the USPTO and can can make use of this 44e filing basis. The applicant is required, at the time of filing in the USPTO, or at some appropriate later point during the pendency of the US application, to hand in a true copy, a photocopy, a certification, or a certified copy of the registration in the country of origin of the applicant.
This Article 6quinquies of the Paris Convention might be employed to link trademark filings in any two trademark offices. It is only if the Office of Second Filing happens to be the USPTO that we call it a “44e” filing.
No matter which two trademark offices might be involved (no matter which Office happens to be the Office of First Filing and no matter which Office happens to be the Office of Second Filing), common sense tells us that at some point during the application process in the Office of Second Filing, there would come a point when it would be necessary for that Office to have an opportunity to see the registration certificate from the Office of First Filing. This blog article focuses on what happens if the Office of First Filing happens to be the European Union Intellectual Property Office (EUIPO) and if the Office of Second Filing happens to be the USPTO.
In such a case, the applicant will naturally want to download a PDF copy of the applicant’s registration certificate from the EUIPO web site, and will naturally want to upload the PDF copy of the registration certificate to the USPTO e-filing system (namely the TEAS system).
Common sense also tells us that everyone would benefit if the Office of Second Filing could have some way of confirming the authenticity of the PDF copy. This would eliminate any concern for example that some inadvertent change had been made to the PDF file, or that some intentional tampering had occurred. And indeed it is with this in mind that the EUIPO provides what is called a cryptographic signature of its trademark registration certificates. The crypto signature permits anyone (including an Office of Second Filing) to be extremely confident that a registration certificate that purports to be from EUIPO is really from EUIPO, and that it has not been tampered with.
With all of this background, I can now describe the foolishness of the design of this aspect of the TEAS system.
Suppose an applicant uses the relevant TEAS form to attempt to upload a trademark registration certificate from EUIPO. The TEAS system will puke on the PDF file, displaying the following error message:
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have been detected in the page, which must be corrected. To correct the error(s), scroll directly this page to access the referenced field(s) (i.e., do not click your browser’s back button).
Yes, what TEAS requires is that the applicant must somehow find a way to tamper with the cryptographically signed registration certificate to remove everything about the certificate that would permit the USPTO to know whether or not it had been tampered with.
I am not making this up!
It turns out that this is not very easy. The way to accomplish the tampering is different depending on exactly which software resources the user happens to have available on the user’s computer. For some users, the approach that will work is to extract each page of the certificate as a single-page image such as a TIF or JPG image, and then reassemble the images into a multipage PDF. For other users, what might work is to “print to PDF” using some random configuration of a print-to-PDF print driver. For some users, in desperation, the only path will be to physically print out the registration certificate and then physically rescan it into a new scanned PDF file.
The result is a PDF which might well have inadvertently have gotten changed in the process of removing the anti-tampering protection. For example two pages might stick together by accident in the physical scanning process.
The result is a PDF which could indeed be intentionally tampered with if an applicant were inclined to do so, and the USPTO people who later were to review the modified PDF file would be none the wiser. Likely as not, such tampering would only get noticed TYFNIL.
This is the height of foolishness. When a first trademark office (here, EUIPO) provides a registration certificate in a format that would permit a second trademark office (here, the USPTO) to be confident that the registration certificate is authentic, common sense tells the second trademark office should welcome this rather than puking on the format.
Any copy of a certified document that is tampered with to remove signatures, etc. is no longer a certified document.
Yes, I usually have to print to cutePDF to get around this. I have always been annoyed by this and never appreciated the reason for the security of the EUIPO registration. So now that the USPTO is about to issue only a soft copy of U.S. registrations, presumably also with that same security, this becomes even more foolish if the USPTO cannot recognize the security of foreign certified soft copies of registrations when it generates its own registrations as such.
The unifying principle here is — the PTO’s IT folks don’t ask questions. On issue after issue after issue (DOCX patent filings being the biggest one; refusal to accept Docusign Powers of Attorney another that’s really obvious), the PTO’s folks don’t ask questions before acting. And that leads to foolish action.
By statutes, agencies must design their computer systems “to be implemented in ways consistent and compatible, to the maximum extent practicable, with the existing reporting and recordkeeping practices of those who are to respond.” 44 U.S.C. § 3506(c)(3)(E). The PTO can’t follow the law if they don’t ask.
Also frustrating: this problem has existed for years and nobody at the PTO has thought to do anything about it. I filed several EUIPO certificates back in 2016 or 2017 and had to use some sort of kludge (printing to PDF or maybe even printing out and re-scanning, can’t remember now) in order to keep TEAS from spitting these back out.
Having experienced the same issue on a number of occasions with documents received from non-US counsel, my workaround is to have a login at EUIPO (available for free, and even though I am not a EU practitioner). Once logged in, I can download a security-free PDF copy of the registration from EUIPO, which is acceptable to the TEAS system.
Until I saw what you wrote, I had no idea that it was possible to download “a security-free PDF copy of the registration” from the EUIPO system. Now I will go and look. Thank you.
You have sent me on a treasure hunt! Surely you are aware that the most prominent button for “Certificate” in the EUIPO system is a button that most definitely does not offer the user a choice of a security-free PDF. But prompted by your comment, I returned to the EUIPO system just now and I hunted and hunted. Maybe I found what you are talking about. I scrolled down to the “Correspondence” area and located an item of correspondence tagged as “Certificate”. The rightmost column in the “Correspondence” area is headed “Actions” and below the column heading are illegible icons. I then hovered a mouse over one of the illegible icons and a pop-up Easter Egg revealed that the icon means “Download”. I clicked the icon for the “Certificate” and sure enough, what happened is I received a non-certified copy of the registration certificate. Thank you.