IP Law Daily, TRADEMARK—Fed. Cir.: Federal Circuit upholds USPTO’s domicile address requirement for trademark applicants, (Feb 14, 2024)

By George Basharis, J.D.

The court rejected arguments by a foreign trademark applicant that the domicile address requirement was improperly promulgated and that it was arbitrary and capricious.

The U.S. Court of Appeals for the Federal Circuit affirmed the decision of the Trademark Trial and Appeal Board (TTAB) that denied the registration of the mark CHESTEK LEGAL for failure to comply with the domicile address requirement of the U.S. Patent and Trademark Office (USPTO). The court held that the domicile address requirement was a procedural rule that did not require notice-and-comment rulemaking under the Administrative Procedure Act (APA). Additionally, the USPTO provided a reasonable justification for the rule as part of a broader regulatory scheme to require foreign trademark applicants to be represented by U.S. counsel (In re Chestek PLLC, February 13, 2024, Lourie, A.).

In 2019, the USPTO proposed a rule that would require foreign trademark applicants be represented by U.S. licensed counsel. The agency explained that the objective of the proposed rule was to address the “growing problem” of foreign applicants’ non-compliance with U.S. legal requirements. The final rule, as adopted by the USPTO, introduced the additional requirement that trademark applications must include the mailing address of each applicant. Notably, the domestic address requirement was not included in the proposed rule initially published for public comment.

Chestek PLLC, a law firm that represents clients in trademark matters, applied for the mark CHESTEK LEGAL in May 2020 and provided only a P.O. box as its domicile address. The USPTO examiner refused the application for not complying with the USPTO’s domicile address requirement. Chestek appealed to the TTAB, arguing that the domicile address requirement was improperly promulgated under the APA and that it was arbitrary and capricious. The TTAB rejected Chestek’s arguments and affirmed the examiner’s refusal. Chestek then appealed to the Federal Circuit.

Chestek argued that the TTAB’s decision to enforce the domicile address requirement should be vacated because the adoption of the requirement did not comply with the notice-and-comment rulemaking requirements under the APA. Additionally, Chestek contended that the domicile address requirement was arbitrary and capricious because the final rule failed to provide a satisfactory explanation for the requirement and did not consider important aspects of the problem it aimed to address, such as the privacy of applicants.

Procedural rule. According to Chestek, the domicile address requirement constituted a substantive rule because it introduced a new obligation for applicants seeking trademark registration. The court clarified that while nearly any procedural rule impacting an outcome could be labeled as substantive, the key distinction in the case rested not on whether the requirement influenced an applicant’s ability to obtain a mark, but on whether it modified the substantive criteria by which the USPTO assessed the trademark application, such as use in commerce or distinctiveness. According to the Federal Circuit, the domicile address requirement did not alter the substantive requirements for obtaining a trademark. The court rejected Chestek’s assertion that a cross-reference in the Patent Act to the APA suggested the challenged rule fell outside the procedural exception to notice-and-comment rulemaking.

Reasonable justification. Chestek contended that the domicile address requirement was arbitrary and capricious because the USPTO offered insufficient justification for its adoption. Chestek suggested that the explanation offered by the USPTO for revising the proposed rule to add the domestic address requirement to the final rule, stated as “for consistency,” was an insufficient justification.

However, the Federal Circuit found that this explanation was not intended to serve as a justification for the final rule. Instead, providing a domicile address was deemed reasonable in light of the USPTO’s requirement that foreign trademark applicants have U.S. counsel. To determine if an applicant was subject to the requirement, the USPTO would need to know the applicant’s domicile. Consequently, the USPTO offered a reasonable justification for the rule as part of a larger regulatory scheme to require foreign trademark applicants to be represented by U.S. counsel. The court also found that the USPTO did not act arbitrarily or capriciously by failing to consider privacy and other concerns raised by Chestek, as those concerns were not before the agency at the time of rule promulgation.

The Case is No. 22-1843.

Attorneys: Andrew M. Grossman (Baker & Hostetler LLP) for Chestek PLLC. Mary Beth Walker, U.S. Patent and Trademark Office, for Katherine K. Vidal.

Companies: Chestek PLLC

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