In a previous post, I tried to be helpful to the Commissioner for Trademarks in her (now his) efforts to smoke out instances of foreign applicants using non-domicile addresses to avoid having to hire US trademark counsel. I noted that it is already an integral part of the Office’s processing of every newly filed US trademark application to run the applicant’s mailing address through an API (application programming interface) that the USPS provides free of charge to the USPTO (and to everyone in the world). This particular API is called the “Address Information” API. The USPTO uses it to “standardize” the mailing address of the applicant, and among other things this forces the mailing address to be all capital letters even if it was originally entered with a mix of uppercase and lowercase letters. It forces the word “Street” to be abbreviated “ST”.
And this API provides to the USPTO a data field called CMRA (“Commercial Mail Receiving Agency”) with a value of either “Y” or “N”. The value will be a “Y” if the address is a post office or a Mailboxes Etc or a UPS Store some other “mail drop” kind of mailing address.
The Commissioner’s office has made clear that it wishes very much to smoke out applicants whose domicile is actually outside of the US, but that are using a post office box in the US or an “in care of” address in the US or some other non-domicile mailing address in the US as a way of evading the Commissioner’s requirement that such a foreign applicant retain US trademark 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.”
In my blog article of a couple of days ago I said that so far as I was aware, the USPTO actively discards the CMRA information that USPS provides to the USPTO in these “Address Information” API lookups.
Anyway one might have wondered if maybe the USPTO had actually been making use of the CMRA field and maybe I was simply unaware of it when I published that blog article. And now we have our answer.
The answer is, I am correct that the USPTO presently fails to make any use of the CMRA data from the USPS. Here is an actual case where, if the USPTO had been making use of CMRA data, there is no doubt that the USPTO would have bounced a trademark renewal. Instead, the USPTO snoozed through the use of a mail drop.
It is US trademark registration number 3739329 (TSDR record) which was registered January 19, 2010 meaning that the ten-year renewal needed to get done by January 19, 2020 (a few weeks ago). The registrant’s mailing address at the USPTO is:
1360 Clifton Ave.
CLIFTON, NJ 07012
Lots of folks would instantly recognize the “PMB” element of the mailing address as a telltale that the address is a mail drop. PMB stands for “Private Mail Box”. One mouse click in any search engine immediately reveals that 1360 Clifton Avenue is a UPS Store. Even without the effort of a mouse click, just looking at the address reveals the “PMB” that tells you it is a mail drop.
But the point I am making here is that the USPS API told the USPTO that this address was a Commercial Mail Receiving Agency. You can see this from the screen shot at right. And the USPTO actively discarded this piece of information.
From TSDR you can see that the Trademark Office did make a half-hearted attempt to see if this registrant was a covert foreigner. The Trademark Specialist in the Post-Registration Branch mailed an Office Action on January 24, 2020 saying this:
The post registration filing lists the owner as an individual and specifies the owner’s domicile as a post office box instead of a street address. In most cases, a post office box is not acceptable as a domicile address because it does not identify the location of the place the owner resides and intends to be the owner’s principal home/the owner’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities. Thus, the owner must provide its domicile street address. Alternatively, an owner/holder may demonstrate that the listed address is, in fact, the owner’s/holder’s domicile.
It’s not really possible to work out from the TSDR file what exactly prompted the Trademark Specialist to send out this form paragraph, but my best guess is it was the telltale “PMB” in the mailing address.
So how did the registrant respond to this Office Action? Did the registrant respond (as one of my clients did recently) by providing the exact latitude and longitude of the registrant’s office? No, the registrant responded by deleting the “PMB 340” information from the mailing address. What remained after the registrant’s update was the exact same address of 1360 Clifton Avenue in Clifton, New Jersey.
After this update, two things happened. First, the Trademark Specialist mailed out a Notice of Acceptance of the renewal. This happened just yesterday, on February 6, 2020, and it is that event that prompted today’s blog article. In addition, I am astonished to report, the Trademark Specialist actually left the “PMB 340” information in place in the mailing address in the USPTO’s official records.
But most importantly, from all of this it is quite clear the USPTO did actively discard the “Y” value in the CMRA field of the USPS data. And it is clear that the USPTO does not train its Post-Registration people to make any use of the CMRA information.
This registrant used a mail drop, and the Commissioner of Trademarks gave this registrant a pass on its use of a mail drop. Meanwhile for a renewal filed by one of the clients of my firm, the Commissioner has formally stated that one of my clients will see its trademark registration canceled for refusing to reveal its domicile address. One wishes the Commissioner would be consistent about such things.