Friday, May 17, 2024

Chestek PLLC Files Cert Petition for Supreme Court Review of CAFC Decision Upholding Domicile Address Requirement

Chestek PLLC has filed a petition for writ of certiorari, asking the Supreme Court to review the CAFC's decision [TTABlogged here] upholding the TTAB'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 PLLC v. Vidal, No. 223-1217 (filed May 13, 2024) (petition here) (S. Ct. docket here).

As noted, the USPTO refused to register the mark CHESTEK LEGAL based on 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 to the CAFC that the Rules were unlawfully promulgated under the Administrative Procedure Act (APA), but the Board disagreed and the CAFC sided with the Board.

The CAFC observed that Section 553(b)(A) of the APA "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 the alternative argument, Chestek offered no support for displacing the procedural exceptions to notice-and-comment rulemaking contained within Section 553(b).

The petition for certiorari states the Question Presented as: "Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2)."

Read comments and post your comment here.

TTABlogger comment: The deadline for filing an amicus brief is June 14th.

Text Copyright John L. Welch 2024.


At 9:52 AM, Anonymous Anonymous said...

Did Chestek file a petition for waiver of the rule? There seem to be a lot of granted petitions….

At 10:58 AM, Anonymous Anonymous said...

This is a weird hill to choose to die on. Especially since there are many ways around the requirement.

At 4:23 PM, Anonymous Anonymous said...

If you use the PO Box and then include the street address, as required, the street address is "hidden" from view by anyone. At least until the USPTO has a data leak, which apparently has happened at least twice and leaked exactly that data.

The main problem with this rule is that the PTO has done nothing to prevent fraudulent use of the data. The rule was a solution in search of problem.

This address requirement has caused more fraud than rather than less because owners are pounded with letters that look real. These fraudsters are smart enough to not send anything to a lawyer, so the owner thinks these letters are real and wire money.

My question is how many millions of dollars in damage have been caused by this silly PTO rule? Likely a LOT, because these companies keep proliferating and the only thing the PRO does is put up a web link that no one ever sees.

How about trusting lawyers and stopping the few bad lawyers, instead of slapping them on the wrist?

Not sure the money is being spent well here, but PTO can certainly do better in stopping fraud.


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