IP Law Daily, TRADEMARK—TTAB: Refusal to register upheld for failing to comply with domicile address requirement, (Apr 4, 2022)

By Linda Panszczyk, J.D.

A post office box does not satisfy the valid domicile address requirement for seeking registration.

The Trademark Trial and Appeal Board has affirmed an Examining Attorney's refusal to register an applicant’s mark on the grounds that the applicant failed to provide the domicile address as required by the Trademark Rules of Practice when it provided only a post office box which, in most cases, is not acceptable. The applicant's argument that the rules requiring a street address were not validly promulgated and should not be enforced was rejected by the Board (In re Chestek PLLC, March 30, 2022, Lynch, C.).

Chestek PLLC (Applicant), sought registration on the Principal Register for the mark CHESTEK LEGAL in standard characters for legal services in International Class 45. The application included a claim of acquired distinctiveness and a disclaimer of LEGAL. In the application, signed by Applicant’s owner, Pamela S. Chestek, Applicant provided a post office box number in Raleigh, North Carolina as its domicile address. The Examining Attorney indicated that in most cases, a post office box is not acceptable because it does not identify the location of applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities. The Examining Attorney therefore required Applicant to provide its domicile street address or demonstrate that the listed address is, in fact, the applicant’s domicile.

However, Applicant declined to do either, and instead maintained during prosecution, as it does on appeal, that the applicable rules requiring the domicile address and the accompanying guidance were unlawfully promulgated and should not be enforced. Although the USPTO offers procedures by which applicants and registrants may seek to avoid making their domicile address public, Applicant, a professional limited liability company, explicitly disavowed any interest in the procedures, indicating that it did not wish to avail itself of them, but only wished to challenge the enforcement of the rules

Domicile rule. Section 1(a)(2) of the Trademark Act provides that an application shall include specification of the applicant’s domicile. Trademark Rules set forth the requirement that an applicant or registrant must provide and keep current the address of its domicile and list the applicant’s domicile address among the requirements for a complete application. In 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. One reason for the domicile requirement is to distinguish between domestic and foreign filers, because an applicant whose domicile is not located within the U.S. or its territories must be represented by an attorney who is qualified to practice.

In this case, Applicant conceded that it has not complied with the requirement to provide the domicile address of its principal place of business. Its appeal rests exclusively on its contention that the Board should reject enforcement of the applicable rules. According to TTAB, an appeal to the Board is not the proper forum; instead, the proper course for such a challenge would have been a petition for rulemaking. While Applicant cited the Administrative Procedure Act (APA), it 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.

Both Applicant and the Examining Attorney addressed the Petition for Rulemaking by the Software Freedom Conservancy, Inc., and the resulting petition decision. The Software Freedom Conservancy’s petition sought a suspension of the USPTO’s implementation of Trademark Rules 2.189 and 2.2(o) and (p) and a new notice and rulemaking process to add more appropriately constrained rules and raised many of the same arguments that Applicant makes in this appeal about the unenforceability of rules based on allegedly improper rulemaking procedures. The petition decision 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. Because the petition decision represents the USPTO’s views on the arguments Applicant now makes about the Trademark Rules, the Board incorporated it by reference in its decision and attached it as an appendix. For the reasons explained in the petition decision, the arguments set forth in the petition and Applicant’s briefs in this case are not a basis to avoid the domicile address requirement.

Other arguments. TTAB also found Applicant’s privacy arguments unpersuasive because most of the USPTO’s TEAS forms, including the application and change of address/representation forms, feature a special field for entry of the domicile address. Use of the field ensures that the domicile address will not be publicly viewable nor retrievable in bulk-data downloads.

Applicant, a business entity, asserted that, if a person needs to keep their street address a secret for their personal protection, the only way to make sure it remains a secret is never to disclose it. However, TTAB noted, Applicant did not assert any such need for secrecy and, as noted above, explicitly disavowed any interest in availing itself of the USPTO’s established procedure for requesting a waiver of the rule.

Applicant also asserted that the final refusal to register at issue in this appeal should be reversed because of so-called “nonfeasance” in connection with how the Software Freedom Conservancy's third-party petition for rulemaking was handled. TTAB rejected Applicant’s contention that the timing and content of the USPTO’s decision on a third-party petition entitled Applicant to a reversal of the refusal to register in this case. TTAB did not agree that the USPTO’s handling of the petition, either in procedure or substance, constituted what Applicant has called “unlawful nonfeasance.” Nor does the USPTO’s handling of the petition form any other basis for reversal of the requirement in this case. Regardless, a proper challenge to the USPTO’s handling of the petition must be brought by the party who could potentially claim the injury, namely, the petitioner. “Applicant fails to convince us that it would be proper to address its assertion of so-called ‘unlawful nonfeasance’ by the Office in an unrelated petition matter involving a third-party not in privity with Applicant,” the Board said.

The case is No. 88938938.

Attorneys: Pamela Chestek (Chestek PLLC) for Chestek PLLC. Charles L. Jenkins, Jr. for the USPTO.

Companies: Chestek PLLC

Cases: Trademark USPTO GCNNews