In her new rules that went into effect on July 2, 2019, the Commissioner for Trademarks made clear that she wants to smoke out any foreign trademark applicant that is using a mailing address that is not the applicant’s foreign domicile address, so as to avoid having to hire US counsel. The Commissioner for Trademarks was quoted as saying “… in most cases, a post office box address is not a domicile because you can’t live in a PO box.” Until now, the Commissioner’s way of smoking out such non-domicile mailing addresses has been extremely unsophisticated — two tests are applied:
- does the address listed in the trademark application explicitly say “box” as in “post office box”? or
- does the address say “in care of”?
When either of these two telltales is seen, the Examiner’s training since July 2, 2019 has been to require the applicant to reveal the applicant’s “domicile” address. One form paragraph gets used if the address contains the forbidden characters “P O Box” and another form paragraph gets used if the address contains the forbidden words “in care of”.
Surely every reader of this blog, when learning of the Commissioner’s new Rules, realized that there are two ridiculously easy ways to circumvent this smoking-out process.
One is to use the street address of the post office. For example our firm’s mailing address is:
P O Box 351240
Westminster, CO 80035
If we were to try to use this address in, say, a renewal of a trademark registration owned by our firm, it is safe to say that we would receive an Office Action bouncing the renewal. But the Postal Service also will deliver mail to our post office box if the address on the envelope is:
3051 West 105th Avenue #351240
Westminster, CO 80035
Such an address will slip right past the eagle-eyed Trademark Office employee given that it does not contain the telltale three-letter string “box”.
The other ridiculously easy way to circumvent this smoking-out is to rent a box at a Commercial Mail Receiving Agency, such as a UPS Store.
I have to assume that the foreign trademark applicants who are trying to avoid having to hire US trademark counsel are no less alert than the readers of this blog, and are also aware of these easy ways to circumvent the Commissioner’s smoking-out efforts.
There is a super easy way that the Commissioner could smoke out the use of a street address of a post office, or the use of a UPS store. There is an API (application programming interface) which the USPS makes available free of charge. It is called the “Address Information” API. Anyone can use this API to validate a mailing address and to standardize the format of the mailing address for efficient mail delivery.
The important part here is that in a computer-automated way, you can plug a mailing address into the API and one of the data fields which the USPS returns to you is shown at right. It is the “CMRA” field which tells you whether the address being validated is the address of a “Commercial Mail Receiving Agency”. If the lookup in the USPS database yields a “Y” in the CMRA field, this reveals that the mailing address is the address of a commercial mail receiving agency. This smokes out the use of the street address of a post office, and it smokes out places like UPS Stores.
As it turns out, the Trademark Office does make use of this Address Information API on every newly filed trademark application. You file a new US trademark application using, say, upper and lowercase letters in the name of the city. And maybe the street is spelled out as “Street” in uppercase and lowercase letters. And then the application finds its way into TSDR after passing through the USPS Address Information API, which among other things “standardizes” the address to be all uppercase letters. And the API cuts back the word “Street” to say “ST”. That’s two letters and both are uppercase. This proves that the Trademark Office just at that moment ran the mailing address of this particular newly filed trademark application through the USPS Address Information API. Look at any US trademark application that you have filed in which you used a lower-case letter in an address and you can see that this happens.
Except, and I am not making this up, the Trademark Office discards the CMRA information which the USPS provides to the USPTO in this lookup. The Trademark Office passes up this opportunity to learn that the filer might have used a UPS Store to avoid having to hire US counsel. The Trademark Office passes up this opportunity to learn that the filer might have used a street address of a US Post Office to avoid having to hire US counsel.
There were 673,233 trademark applications filed in FY 2019. That’s about 1800 applications filed per day. This means that about 1800 times per day, the Commissioner discards the CMRA information, and passes up a chance to effortlessly smoke out a filer that has used a post office street address or a UPS Store to avoid having to hire US counsel.
This is the sort of thing computers are good at. It costs no money to do this lookup. It takes up no time of any employee of the Trademark office to pay attention to the CMRA field. The computer programming that would be needed to actually make use of the CMRA field rather than discarding it, is programming that a team of two or three competent programmers could accomplish in a single weekend, if provided with soft drinks and pizza, with Saturday afternoon and all of Sunday left over.
Yet in the time that has gone by since July 2, 2019, the Commissioner has not made use of this CMRA field in her effort to smoke out filers that are trying to avoid having to hire US counsel. The way that you know that I am right about this is that there is no form paragraph in the Office training along the lines of:
It is noted that the address provided by the applicant is the address of a commercial mail receiving agency. As such, this is not the domicile of the applicant, we thereby refuse registration, you are now required to hire US trademark counsel, etc. etc.
It seems to me that if the Commissioner is serious about trying to smoke out instances of an applicant making use of such a non-domicile address to avoid having to hire US counsel, the Commissioner should stop discarding the CMRA data which it receives 1800 times per day from the USPS, and should instead make use of that CMRA data.
I went to TESS and I clicked through some randomly selected US trademark applications filed on January 2, 2020 (a date that I picked at random) to see if I could find some not-yet-examined cases in which the applicant used a CMRA as the applicant’s address. Here are the first two such applications that I found:
- US trademark application number 88745467 (TSDR record)
- US trademark application number 88745070 (TSDR record)
Each of these applicants lists a Commercial Mail Receiving Agency as its address.
If the Commissioner wishes to be consistent, she will refuse registration to each of these applicants just as she would refuse registration to an applicant using a post office box or a “care-of” address as its address. On my quick spot-check, it looks like maybe about 1% of all US trademark applications list a CMRA as the mailing address.
Here’s an interesting example of a case where we can see that the post-registration paralegals are being trained to watch for the telltale “PMB” in a registrant’s mailing address. See the renewal that is going on right now in US trademark registration number 3739329 (TSDR record). The Trademark Specialist spotted the “PMB” and mailed an Office Action demanding that the registrant reveal where she sleeps at night. The registrant’s way of dealing with this inquiry was simply to delete the “PMB” information from the address. This is a UPS Store, and I will guess that the registant’s relationship with the storekeeper is such that the storekeeper has promised to deliver the USPTO mail even without the PMB information.
Now will the USPTO (perhaps prompted by this blog article) be sophisticated enough to look in the USPS database to see that the address is a CMRA? Or will the USPTO pass up this opportunity to browbeat a trademark registrant that has the temerity to use a UPS Store as a mailing address?
I am tracking these two cases, and a few others that I found that are using CMRAs, that are not cited by number in this blog article, to see whether the Commissioner starts using the CMRA data (perhaps prompted by this blog article).