Friday, April 01, 2022

Precedential No. 8: TTAB Upholds Refusal Based on Applicant's Noncompliance with Domicile Address Requirement

Pamela Chestek, sometimes known as the IP Ownership Maven (blog), applied to register the mark CHESTEK LEGAL on behalf of her law firm, for "legal services." However, she declined to provide the "domicile address" of applicant, instead furnishing a post office box number in Raleigh, North Carolina. Examining Attorney Charles L. Jenkins, Jr., refused registration, citing violation of Trademark Rules 2.189 and 2.32(a)(2) because a post office box is not a street address. Applicant argued that the applicable rules were unlawfully promulgated and should not be enforced. The Board disagreed. In re Chestek PLLC, 2022 USPQ2d 299 (TTAB 2022) [precedential] (Opinion by Judge Cynthia C. Lynch).

The term "domicile" in this context means "the permanent legal place of residence of a natural person or the principal place of business of a juristic entity." According to TMEP Section 803.05(a)(2021), "[i]n most cases, a post office box, a 'care of ' (c/o) address, the address of a mail forwarding service, or other similar variation cannot be a domicile address." Applicant chose not to avail itself of the procedure whereby an applicant may seek to avoid making public its domicile address.

The Board ruled that the TTAB is not the proper forum for challenging the enforcement of an applicable rule: "the proper course for such a challenge would have been a petition for rulemaking." See 5 USC § 553(e) ("Each agency shall give an interested person the right to petition for the issuance, amendment, or repeal of a rule."). Applicant cited the Administrative Procedure Act (APA) but offered "no authority for making an APA challenge in an administrative forum that is part of the same agency that adopted the rules and policy guidance."

The applicant pointed to a "petition for rulemaking" filed by the Software Freedom Conservancy, also represented by Ms. Chestek, which petition sought a suspension of Rules 2.189 and 2.2(o) and (p), and requested a "new notice and rulemaking process to add more appropriately constrained rules." The decision on that petition was incorporated in the subject decision because it addressed the USPTO's compliance with the APA, the Paperwork Reduction Act, the Regulatory Flexibility Act, and Executive Order 13771 (now revoked) in connection with the challenged rules. For the reasons stated in the petition decision, applicant's arguments in this case "are not a basis to avoid the domicile address requirement." 

The Board also found unpersuasive applicant's policy arguments. The domicile information entered on the application form is now hidden from public view. Applicant argued that this was insufficient because "one should not have to rely on a government agency for one's personal safety." However, applicant did not assert any such need for secrecy, and it explicitly refused to avail itself of the USPTO's procedure for waiver of the rule. See Rules 2.146(a)(5) and 2.148, and TMEP Section 1708.

Finally, applicant argued that the refusal to register should be reversed due to "nonfeasance" in the handling of Software Freedom Conservancy's petition. The Board pointed out, however, that the applicant here is not in privity with the Conservancy, and it would not be proper for the Board to consider an unrelated petition matter involving an unrelated third party. 

And so, the Board affirmed the refusal

Read comments and post your comment here.

TTABlogger comment: It seems to me that an individual applicant would have a better argument for privacy and secrecy than a law firm.

Text Copyright John L. Welch 2022.


At 9:47 AM, Anonymous Anonymous said...

This should've been classified as a WHYA, since anyone could find the "domicile" address of this applicant given applicant lists the "Physical address" of the law practice on the website under "Contact." Seems like a waste of the examiner's and Board's time.

At 1:28 PM, Anonymous Anonymous said...

The domicile address requirement was promulgated to enforce the requirement that foreigners hire US attorneys (brought about by the avalanche of garbage filings from China). The PTO wanted to make sure that the garbage filers could not avoid the US attorney hiring rule by setting up a within-the-USA P.O. Box if they are located outside the USA. That almost made sense.

But when the the applicant is represented by a US attorney, why does the PTO have to have a better domicile address than a PO Box? Best answer I can come up with is "bureaucratic petulance," which we see all too often.

At 7:34 PM, Anonymous Anonymous said...

The biggest problem with the PTO requiring the address and email of an Applicant is that they are getting scraped by scammers and spammers.

The PTO has given these scam companies and spammers a free gift.

If the PTO wanted to crack down on all the fraudulent companies that are sending letters about "renewals" and "publications" they would keep the address details off the main "linked" PTO web page or at least make it a digital image file that is harder to scrape.

The email addresses are easily pulled off the site and are being added into spam databases and being used by spammers.

I agree with Pam, who appears to be trying to prove a point, that there is no purpose to these rules.

Who at PTO made up these rules?

Probably, the same people who think it makes sense to require two factor authentication just to file a trademark application and the same ones who change the Teas forms every week so your templates no longer work. Let's make everything harder and more complicated.

At 7:43 PM, Anonymous Anonymous said...

As if someone in China could not find an easy way to use a non-PO Box address in US?

I have seen office actions issued where PTO examiner's checked the addresses and if they are a "UPS type Store" they "rejected" the address as improper.

With more people working at home, we are putting people at risk requiring they give out their home addresses, unless they go through absurd hoops to hide them.

Really? Why? What is the point? Let's make things easier, not harder.

At 6:30 PM, Anonymous Anonymous said...

The only rational explanation I've seen is still tinfoil-hat level, but...

The theory is that this was politically motivated, that someone from the Trump administration leaned on the PTO, and that the real target was, shall we say, "non-U.S. citizens living in the U.S. without permission" with the goal being to force such individuals to disclose their actual place of residence in order to scare them and/or make their lives more difficult.

I think that's probably just a wild-eyed theory, but I haven't heard a better one.

At 10:34 AM, Anonymous Anonymous said...

I find it really interesting that three of the comments above are concerned with putting people "at risk" through asking for a domicile address. Do the above commenters not realize that the USPTO provides the option to have the domicile address hidden from view? Applicants can have a PO Box or other non-domicile address as a mailing address that is publicly available, but the domicile address can be hidden with a simply click of a checkbox on the application form (hardly an "absurd hoop"). So, that argument is a non-starter. Moreover, what happens if someone represented by a U.S. attorney later ends that representation? The USPTO then has no domicile address on record and it becomes unclear if that applicant needs to have a U.S. attorney. Furthermore, if applicants are really concerned about spam emails, the simple answer is to create an email address specifically for USPTO correspondence (setting one up in Gmail for example takes all of two minutes). If there really is "no purpose to the rules," then I suppose what should be done actually challenge their necessity during the rulemaking process instead of filing pointless appeals and then complaining about it after the fact?


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