The Trademark Office and Post Office Boxes

Executive summary:  I received a nice phone call from a high-up person in the office of the Commissioner for Trademarks at the USPTO about the post office box policy.

The details:

On September 6 I blogged about the USPTO’s “first revised” exam guideline for trademark examiners who are supposed to force non-US trademark applicants to hire US counsel.  I pointed out a lot of things that were wrong with the “first revised” exam guideline.  The exam guideline came after the August 2, 2019 exam guideline which had been even worse.

The point of today’s blog article is to mention that I received a phone call a week ago or so ago from a very nice high-up person at the Trademark Office.  For now I’ll not name the caller but I will acknowledge that it sounds like the folks in the office of the Commissioner for Trademarks are trying to be responsive not only to the first firestorm of criticism that (justifiably) followed the August 2 exam guideline but also the second firestorm of criticism that (also justifiably) followed the September 6 exam guideline.

First a bit of background, and then I will get to some of the things that the nice person from the Commissioner’s office communicated to me.

The August 2 exam guideline, it may be recalled, said that examiners at the USPTO were directed to inquire into the immigration and visa status of any trademark applicant who lists an address in the US and who says that he or she is not a US citizen.  The September 6 exam guideline dropped the requirement about inquiry into immigration and visa status, but retained a number of other troubling requirements.  Among the most troubling was a new policy that henceforth the USPTO would refuse to send trademark correspondence to post office boxes.  Under the September 6 exam guideline, a trademark applicant would be required to reveal in the public record the domicile address of the trademark applicant.  In plain language the trademark applicant would be required to reveal where he or she put his or her head on the pillow at night when going to sleep.  Furthermore, under the September 6 exam guideline the trademark office would refuse to send postal correspondence to any mailing address other than that domicile address.

As I wrote in my blog article, there were several very big problems with this aspect of the September 6 exam guideline.  To briefly recap some of the problems:

  • Battered spouses.  The exam guideline seemed to me to be tone-deaf, clueless in the extreme, about what might happen if some trademark applicant had the very bad luck to have been stalked in the past, or the very bad luck to have been a battered spouse.  The exam guideline as written contemplated that the only way that an applicant might be able to get away with not having to reveal his or her domicile address in the public record would be by the (likely very embarrassing) public spectacle of having to file a petition seeking special permission to not have to reveal the domicile address.  What kind of evidence might the petitioner have to put into the public record as part of the filing of the petition?  Police reports?  A domestic violence protective order?  The exam guideline did not say.
  • Lack of postal delivery.  The drafter of the exam guideline seemed unaware that perhaps one-third of the geographic area of the US is unserved by US postal delivery.  My firm’s office, as recently as ten years ago, was in a part of Colorado where even now there is no postal delivery to street addresses and where the only postal delivery is to post office boxes.  The unwillingness of the Trademark Office to send postal mail to post office boxes under the September 6 exam guideline means that the company that now has its office in the three-story office building where my firm once had its office would be unable in 2019 to obtain a US trademark registration.  This is so because even now in 2019, the US Postal Service does not deliver mail to street addresses in Summit County, Colorado.  The USPS only delivers mail to post office boxes.  
  • Simple respect for privacy.  Call me old-fashioned but I think many people like to preserve their privacy.  A celebrity seeking to obtain a US trademark registration might understandably not wish to tell the world where he or she puts his or her head on the pillow at night.  Yet the September 6 exam guideline left no room for any respect of the privacy or security of a trademark applicant regarding his or her domicile.

Which brings us to the very nice telephone call that I received.  I don’t know that any purpose is served by naming the particular person who called, but it was a very nice high-up person in the office of the Commissioner for Trademarks.  And this person spent quite a bit of time explaining the policy concerns underlying the original exam guidelines and the “first revised” exam guidelines.  I made clear to this person that I think what is very badly needed is a “second revised” exam guideline.  Hopefully a second revised guideline will be forthcoming.  (Hopefully it can adopt some of the suggestions in this blog article!)  

One policy concern is, of course, well known to many readers of this blog, and that is the surge in the past year or so of trademark filings originating outside the US that seem designed to take unfair advantage of the US trademark system.  Many thousands of trademark filings have been made that originate from outside the US that seem to have inauthentic specimens of use, implausible recitations of uses of marks in commerce, and other improprieties.  In response, the USPTO has promulgated a rule requiring that trademark applicants located outside the US must nowadays be represented by US counsel.  The hope of course is that the involvement of US counsel might serve as a bit of a filter on a trademark filing, perhaps discouraging or even eliminating certain types of filings.

The related concern is, of course, that a filer of improper trademark applications who is located outside of the US might try to circumvent the new requirement of having to hire US trademark counsel by the tactic of simply renting a P O box in the US and using that as a mailing address.  Commissioner for Trademarks Mary Boney Denison has been quoted on this topic as saying “in most cases, a post office box address is not a domicile because you can’t live in a P O box.”  

But suppose the applicant who lists a P O box as his or her address has hired US counsel?  Doesn’t that satisfy the policy concern?  This was one of my questions to the person who had telephoned me.  If, say, the battered spouse has hired US counsel in a trademark application, shouldn’t that be enough for the Trademark Office to relent and allow that applicant to use a PO box and not have to go through the potentially extremely embarrassing process of having to file a petition just to get permission not to have to reveal a domicile address?  If, say, a business located in Summit County, Colorado wants to obtain a trademark registration despite being in a place where the USPS does not deliver mail to street addresses, shouldn’t it be enough to hire counsel?  Why should it be additionally necessary to prepare and file a petition?

A related problem is that the “first revised” exam guidelines, like the original ones, make clear that the Trademark Office is hostile to the notion of the applicant receiving mail “in care of” the attorney who has been hired and will not permit the use of an “in care of” address.

What I heard from this person in the Commissioner’s office is that there is an additional policy concern, namely that apparently some of the bad actors are appropriating the identity of US attorneys.  The idea I guess is to circumvent having to hire US counsel by simply appropriating the identity of some US attorney.  This, then, is the explanation for why the September 6 exam guidelines do not simply drop the browbeating (my terminology here) of the applicant once the applicant has hired US counsel.  The September 6 exam guidelines preserve the browbeating even when US counsel has been hired, because maybe it is not really the case that US counsel has been hired!  Maybe some identity theft has taken place regarding the putative US counsel.

Which brings us back around to the battered spouse … the trademark applicant who is concerned about stalking … the celebrity who does not want his or her residence address revealed to the public.  What level of detail is the Trademark Office going to require in a request for permission to use a post office box for postal mail?  Will the filer have to provide a copy of a police report?  A domestic abuse protective order?  No, I was told, a mere two-word statement that the applicant has a “safety concern” will suffice.  

What about the applicant who has the bad luck to be geographically located in a place where the post office does not deliver mail to street addresses?  Apparently under a to-be-released clarification, the filer could list a post office box in the correspondence address field of the TEAS form, and could reveal the street address elsewhere in the trademark application, perhaps in the “miscellaneous statement” section, along with an explanation that the USPS does not deliver mail to the street address.

What about the applicant that simply wants to use a P O box for correspondence for business reasons?  Maybe because the applicant wants to control who handles the mail, or because the applicant has frequent address changes.  Or maybe the applicant is in a crime-ridden area where delivery to street addresses is problematic.  Hopefully there would be a “second revised” exam guideline that recognizes that there are perfectly legitimate reasons why a trademark applicant might want to receive postal mail at a post office box.  And to the extent that the Trademark Office feels that it is of crucial importance to inquire into the domicile address of the applicant, perhaps this could be communicated in some part of the trademark application other than the field of the application that is used to communicate the correspondence address.

It will be noted that on the patent side, the USPTO’s inquiry into the domicile of an inventor is limited merely to the city and state of domicile, and does not drill down to the level of detail of a street address.  

Anyway hopefully there will soon be a “second revised” exam guideline that will make it extremely clear that yes of course the Trademark Office will be perfectly willing to address mail to post office boxes.

Just yesterday the USPTO announced that it will soon require the filer of a TEAS form to use a MyUSPTO user ID and password (and two-factor authentication) as part of the e-filing process.  This would presumably permit the USPTO to track somewhat more closely who exactly is doing particular TEAS filings, and perhaps eventually to reduce the incidence of identity theft of US attorneys in TEAS filings.

Given that with this login process, the Trademark Office probably can eventually be much more confident that a filer who purports to be a US attorney probably really is a US attorney, I trust the Trademark Office will be able to relax the hyper-scrutiny of the applicant in cases where a US attorney has been retained.  And will be able to allow mail to be send “in care of” the US attorney.

Anyway it was very nice to receive the telephone call from the nice person in the Commissioner’s office.  I do think the folks in the Commissioner’s office are trying to be responsive to some of the concerns that practitioners have raised about the exam guidelines.

4 thoughts on “The Trademark Office and Post Office Boxes

  1. Carl —

    This reflects very badly on the PTO’s legal compliance. There are laws that govern rulemaking (both regulations issued via notice-and-comment and rules issued via guidance). This rule is almost a study in legal shortcutting — and consequent breach — of those laws. The Administrative Procedure Act, Regulatory Flexibility Act, Paperwork Reduction Act, Executive Orders 12866 and 13771, and several other laws provide “checklists” of issues that an agency is supposed to consider, and those “checklists” would have caught all of the issues you lay out above.

    But the PTO bypassed all these laws. Pam Chestek wrote a brilliant Petition for Rulemaking requesting repeal of the this rule, at https://sfconservancy.org/docs/2019-09-18_Conservancy-USPTO-Petition-re-rule-2_189.pdf laying out the breaches. Because the PTO shortcut all these laws, the rules are unenforceable. Just do it the way you always have. (Good luck to you, by the way, finding anyone in the PTO that gives a rat’s ass about following the law, or backing down when their breach is pointed out.)

    I’ve had several conversations with senior PTO lawyers — the usual response is something along the lines of “Mr. Boundy, aren’t you elevating form over substance?” No, it’s a statute. And Congress had good reasons to embed them in statute.

    A couple articles that lays out the general principles —
    — an amicus brief to the Federal Circuit https://cdn.patentlyo.com/media/2019/09/BoundyBrief.pdf
    — several of my articles, https://ssrn.com/author=2936470 — the Part 3, Part 1, Cautionary Note, and “Ordinary Meaning” articles are especially trenchant on the issue of PTO shortcutting

    These laws are not recreational, bureaucratic sport, or “catch me if you can — until then the law can go fly a kite.” When an agency follows them, the agency avoids unintended consequences. When an agency shortcuts, the results are embarrassment for things that are easily seen to be just dumb, costs for the public that are far higher than savings for the agency, or, as in this example, compromised personal safety.

    David Boundy

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