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Here is a UPS Store at 3020I Prosperity Church Road in Charlotte, North Carolina.  It only takes a couple of mouse clicks to figure out that this address is a UPS Store, from the US Postal Service API as quoted below. (This street address is ratted out in the Postal Service lookup system to be a Commercial Mail Receiving Agency.)  

The Trademark Office has made much of its desire to force each of its trademark applicants to reveal to the Trademark Office where he or she sleeps at night.  Given that with a couple of mouse clicks, or a couple of lines of computer code, the Trademark Office could ferret out UPS Stores like this, why does the Trademark Office not do so?  See for example trademark application number 88745467 (TSDR record) in which the Trademark Office mailed an Office Action yesterday.  Conspicuous by its absence in the Office Action is any mention of the fact that the applicant has not revealed to the Trademark Office where it sleeps at night.

This reminds us of yesterday’s blog article where the Trademark Office similarly snoozed through a case of a trademark applicant having failed to reveal where it sleeps at night.

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(Updated:  Now on March 30, this case has passed Final Review prior to publication.  The Final Review person also snoozed through the fact of the applicant having failed to reveal its domicile to the Trademark Office.)

The Trademark Office is so lacking in uniformity in its efforts to inquire into where a trademark applicant sleeps at night.  Here’s yet another example of the Trademark Office letting an applicant get away with not revealing to the Trademark Office where it sleeps at night. This is the same Trademark Office that has told me that it will cancel my trademark registration unless I reveal where I sleep at night. Continue reading →

As I have pointed out in earlier blog articles, the Trademark Office has been very inquisitive as to the street address where its trademark applicants sleep at night.  I have also pointed out in earlier blog articles that to the extent the Trademark Office wants to be consistent and thorough about this, the Trademark Office should not discard the CMRA information which USPS provides to the Trademark Office.  

The Trademark Office looks up every address of every trademark applicant in the USPS’s address verification API, and the USPS returns not only a verified address, but also a data field that reveals whether that address is or is not a Commercial Mail Receiving Agency.  In other words the USPS rats out the applicant that is using a post office box or a UPS Store or a Mailboxes Etc. to avoid revealing where he or she or it sleeps at night.

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Here is a concrete example of the Trademark Office passing up a chance to force an applicant to reveal to the Trademark Office where it sleeps at night.  It is US trademark application number 88745070 which you can see here.  When USPTO looked up the applicant’s address, the USPS said “Y” in the CMRA field, as you can see here.  In fact this address is a post office address.  101 West Goodwin Street is a US post office, and the number 3849 is the post office box of the applicant.

But the Trademark Office discarded that information.  The Trademark Office has mailed an Office Action that says nothing about the need for the applicant to reveal to the Trademark Office where it sleeps at night.

I wonder whether the Trademark Office, subsequent to the posting of this blog article, will mail another Office Action requiring the applicant to reveal to the Trademark Office where it sleeps at night?

(Revised to reflect news from another trademark practitioner that sometimes the Trademark Office has indeed pursued “where do you sleep at night” inquiries for at least a few non-US applicants.)

One peculiarity that I have not seen fully explored until now is the observed fact that the desire on the part of the Commissioner for Trademarks to know the street address where a trademark owner sleeps at night seems to apply almost exclusively to trademark owners residing within the US.

The Office Actions in which the Commissioner for Trademarks demands to know the street address where the owner sleeps at night, the Office actions that are triggered by the use of a Post Office Box, happen almost exclusively only if the owner’s address is in the US.  An owner of a trademark registration whose address is outside of the US, whose only address of record is a post office box, usually does not receive such an Office Action demanding to know where the owner sleeps at night.  Stating this as clearly as possible, the Commissioner for Trademarks mostly enforces its rule about requiring revelation to the USPTO personnel of where the owner sleeps at night in the special case where the owner’s address is in the US.

You might think that this highly selective demand to know where a person sleeps at night might be explained by the requirement that an owner located outside of the US hire a US attorney. The idea might be that the Commissioner for Trademarks feels the need to know exactly where the owner sleeps at night so as to smoke out the owners whose domicile is outside of the US, since they are required to hire US counsel.  The Commissioner for Trademarks would not want such a non-US owner to be able to evade the requirement of hiring US counsel by the stratagem of renting a Post Office Box in the US.

But that dog won’t hunt.  The observed behavior of the Commissioner for Trademarks is that Office Actions like this are being mailed in cases where the owner is located in the US and has hired US counsel.  In other words even if the owner has hired US counsel, thus making it completely irrelevant whether or not the owner’s domicile is in the US for purposes of figuring out whether or not the owner should be required to hire US counsel, still the Commissioner for Trademarks demands to know the street address where that US owner sleeps at night.

And again to emphasize a point made above, in those cases where the owner has admitted that he or she resides outside of the US (and has of course hired US counsel), and where the owner has made us of a Post Office Box located outside of the US, inexplicably the Commissioner for Trademarks has only seldom mailed an Office Action requiring the owner to reveal where (outside of the US) the owner sleeps at night.

It is mostly in the special case where the owner is in the US that the Commissioner for Trademarks demands to know where the owner sleeps at night.  

The Rules that the Commissioner uses to justify this inquisitiveness into the street address where the owner sleeps at night do not exempt owners located outside of the US.  If the Commissioner were to carry out the Rules consistently, the Commissioner would be mailing out such Office Actions in all cases where a post office box located outside of the US was being used.

I wonder why it is that the Commissioner enforces those Rules so inconsistently depending upon whether the trademark owner’s post office box is inside the US or outside the US?

The Commissioner for Trademarks persists in demanding to know where trademark owners sleep at night.  Now it’s personal.  The Commissioner’s representative (a Post Registration Trademark Specialist) has today mailed an Office Action in a case where I personally own the trademark registration.  I am trying to do a ten-year renewal and the Specialist tells me that although everything else about my trademark renewal is in order, she refuses to accept the renewal because I have not revealed to USPTO personnel where I sleep at night.  I have today filed a petition asking for the Commissioner to waive his requirement that I reveal to USPTO personnel where I sleep at night.  It will be interesting to see what happens next. Continue reading →

Two academics at NYU Law School have released a fascinating paper about fake specimens of use in US trademark applications. The article says:

… with respect to use-based applications originating in China that were filed at the U.S. Patent and Trademark Office in 2017 solely for apparel goods, we estimate that 66.9% of such applications included fraudulent specimens. Yet 59.8% of these fraudulent applications proceeded to publication and then 38.9% proceeded to registration.

The reason that I learned about this paper is that (a) I am subscribed to the e-Trademarks listserv and (b) alert listserv member John L. Welch posted a link to this paper on that listserv.  Thank you John!