CAFC Affirms TTAB: USPTO'S Domicile Address Requirement for Applicants Was Not Improperly Promulgated

The CAFC upheld the Board's affirmance [TTABlogged here] of a refusal to register the mark CHESTEK LEGAL for "legal services" based on Applicant Chestek PLLC's failure to provide its "domicile address." Chestek listed a post office address, but under Trademark Rules 2.32(a)(2) and 2.189 a post office box is not a street address. Conceding that it failed to comply with the domicile address requirement, Chestek argued on appeal that the Rules were unlawfully promulgated under the Administrative Procedure Act (APA), but the Board disagreed and the CAFC sided with the Board. In re Chestek PLLC, 2024 USPQ2d 297 (Fed. Cir. 2024) [precedential], cert. denied (October 7, 2024).

Chestek argued that the domicile address requirement was improperly promulgated for two independent reasons: (1) that the USPTO failed to comply with the requirements of notice-and-comment rulemaking under 5 U.S.C. § 553 because the proposed rule did not provide notice of the domicile address requirement adopted in the final rule; and (2) that the domicile address requirement is arbitrary and capricious because the final rule failed to offer a satisfactory explanation therefor.

As to the first argument, the court observed that Section 553(b)(A) "does not require the formalities of notice-and-comment for 'interpretative rules, general statement of policy, or rules of agency organization, procedure, or practice.'" Chestek argued that the domicile address requirement is not an "interpretative" rule but rather a "substantive" rule requiring notice-and-comment. Alternatively, Chestek argued that notice-and-comment is required even for interpretative rules. The CAFC was not persuaded.

The court concluded that the USPTO's requirement is not a substantive rule because it "does not alter the substantive standards by which the USPTO evaluates trademark applications, e.g., a mark's use in commerce or distinctiveness. "As to second argument, Chestek offered no support for displacing the procedural exceptions to notice-and-comment rulemaking contained within Section 553(b).   

Turning to Chestek's assertion that the promulgation of the domicile address requirement was arbitrary and capricious, the court concluded that the Office offered sufficient justification for the requirement. The Office adopted the requirement as part of a larger scheme to require foreign applicants, registrants, or parties to a trademark proceeding to be represented by U.S. counsel. The U.S. counsel requirement was needed "because of the influx of unauthorized practice of law by foreign parties." In order to condition the requirement of U.S. counsel on domicile, the Office would need to know the applicant's domicile address, and it was reasonable for the Office to require that information.  

Finally, Chestek contended that the domicile address requirement was arbitrary and capricious because the Office did not take into account privacy concerns, such as its impact on victims of domestic violence or homeless individuals. The court was unmoved. It noted that an agency's reasonableness must be judged based on the record before it at the time of decision. The policy concerns here raised by Chestek were not raised before the Office, nor did the Office receive comments from parties expressing the privacy and other concerns raised by Chestek.

Concluding that the USPTO properly promulgated the domicile address requirement and that Chestek failed to comply with that requirement, the CAFC affirmed the Board's decision.

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TTABlogger comment: Some call this the "Where do you sleep at night?" case.

Text Copyright John L. Welch 2024.