Readers will recall my recent blog post where my client wanted to renew a trademark registration, but my client did not want to let the Trademark Office start using a street address for postal correspondence. My client wanted the USPTO to continue using a post office box for postal correspondence, just as the USPTO had done for the past decade. After several months of trench warfare, the Trademark Office blinked. The Trademark Office has given up on trying to deny our client the ability to use its post office box, and we have our renewal. We won, but it is unfortunate that it took months of trench warfare and a lot of time and money to win.
This all began a couple of years ago when the Trademark Office decided that it had to Do Something About Those Many Fraudulent Foreign Trademark Applications.
Step one in Doing Something was to force the foreign applicants to hire US counsel rather than proceeding pro se. The idea I guess is that US counsel, always conscious of the fact that they have skin in the game because their license to practice law could be revoked at any time, might tend to filter out fraudulent filings.
Step two in Doing Something was to smoke out those sneaky foreign applicants who might decide to try to avoid having to hire US counsel by the stratagem of renting a mail drop in the US.
There would have been smart ways to smoke out mail drops (see blog article) but the Trademark Office did not use those smart ways. Instead the Trademark Office devised a really dumb way to do this — announcing as a matter of policy that henceforth trademark applicants and registrants are not allowed to use post office boxes.
This is dumb on so many levels. It completely misses that there are plenty of mail drops that can be rented that happen to not have the words “p o box” in the address — for example a UPS Store. And it denies the use of post office boxes for perfectly legitimate reasons such as lack of reliable postal delivery to street addresses. Or, in my case personally, the problem that in many rural areas the postal service simply does not deliver mail to street addresses.
So on July 2, 2019 the Trademark Office commenced a program refusing to allow the use of post office boxes for correspondence addresses. This refusal extended not only to an applicant filing a new trademark application but also to a registrant seeking to renew a trademark registration.
My client, located in the US, wanted to renew its registration but did not want to switch from a post office box to a street address, for the simple reason that postal delivery to street addresses is unreliable in my client’s location. My client finds post office box delivery to be much more reliable.
We sent in our renewal. This was some months ago. Specimen of use, supporting declaration, money, the usual.
What came back was an Office Action from Post-Reg (the post-registration branch). Post-Reg said everything was fine about our renewal, specimen was fine, money was fine, declaration was fine, but there was a big problem, the registration record only showed a post office box. We must provide our client’s domicile, defined by the Trademark Office as the “location” of the “headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities”.
We responded by explaining that we knew perfectly well why the Trademark Office was asking this question, namely to smoke it out if our client happened to have a domicile outside of the US, and we explained further that we knew perfectly well why the Trademark Office was asking that question, namely that if our client happened to have a domicile outside of the US, then it was going to be required that our client hire US trademark counsel.
In response, we pointed out that our client had already hired US trademark counsel, and thus that the question whether our client’s domicile was in the US or outside the US had ceased to be relevant. We also said that as an accommodation to the Trademark Office, even though it did not matter given that our client had already hired US trademark counsel, we would provide the “location” of the headquarters. We provided the exact latitude and longitude of the headquarters and pointed out that this location is in the US. Surely this would provide everything the Trademark Office needs, right?
The Trademark Office wrote back with argument and citations that I believe would have gotten a lawyer sanctioned had it been filed in an ordinary court, as I discuss here. I responded, pointing out the disingenuousness of two of the three authority citations. I also made a counter-offer, namely I offered to reveal the street address so long as the Trademark Office would agree in advance not to attempt to use the street address for mailings to the registrant.
Post-Reg did not accept my counter-offer. There is a scorched-earth approach that Post-Reg can use when it wants to be really tough on folks. That is the approach that the Trademark Office chose here:
Your response to the outstanding Office action regarding the Combined Section 8 Affidavit & Section 9 Renewal Application was timely received on [date].
The Combined Section 8 Affidavit & Section 9 Renewal Application cannot be accepted because the domicile address does not identify the location of the owner’s/holder’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities.
After consideration of the response and the facts of record, the refusal to accept the Combined Section 8 Affidavit & Section 9 Renewal Application is maintained for the reason(s) set forth below. The registration will be cancelled and expired in due course.
(Emphasis added.) Of course our papers did “identify the location”, with latitude and longitude down to minutes and seconds. But as practitioners know, the post-reg people have the ability cut off further discussion by mailing out a final refusal to which the only review path is a petition (which I can promise you is almost never granted). But if you are super lucky you might have time left to file an entirely new Combined Section 8 Affidavit & Section 9 Renewal Application. (I picked this particular battle anticipating that there would be trench warfare with the Trademark Office, and allowing plenty of time for an entirely new filing if this final refusal were to come to pass.) So indeed we filed an entirely new renewal. (Yes that is like wimping out because we are handing another $125 to the Trademark office. But ya gotta do what ya gotta do.)
In our new renewal I wanted to provide just barely enough of a domicile address to allow the Trademark Office to save face and pretend that they got what they wanted, and yet to deny the Trademark Office the ability to start using the street address for sending mail to our client. I wanted to lock it in that going forward, we still get to use the post office box that the Trademark Office told us that we cannot use.
So I provided the street name and the street number. But I very intentionally did not name the city where my client’s domicile is located, but only the county. And I very intentionally did not provide the ZIP code for the address for my client’s domicile.
The alert reader will appreciate that at this point in the paper record, the facts about my client’s domicile as revealed to the Trademark Office were exactly as they were with the latitude and longitude. Yes a motivated person could use the street and number and county with Google maps to find a satellite view of the building where my client’s office is located, and could see the nearby Masonic temple. But that same motivated person could have accomplished exactly the same Google maps result using the latitude and longitude that I had provided to the Trademark Office two steps earlier in the trench warfare. The exact same office building and the exact same nearby Masonic temple would have popped up on the computer screen.
The main point here is that the Trademark Office ended up with nothing better than what I had offered in my previous counter-offer. I had offered to give them the street address so long as they would not use it for sending mail to my client. And now the situation is that they don’t have enough information to use the street address to send mail to my client. Right now if you were to look in the TSDR record, the address listed for my client continues to be the post office box. The Trademark Office, in terms of extracting “where does my client sleep at night” information, has accomplished nothing more than it would have accomplished if it had accepted my counter-offer.
There are so many sad and unfortunate things about how this went.
First, we won. We got what we wanted. Going forward the Trademark Office will have to suck it up and continue to use our client’s post office box if it wants to send mail to our client, even though the Trademark Office’s stated position was that we would no longer be allowed to use the post office box. But to win on this, we had to do many months of trench warfare with the Trademark Office, which is sad.
Second, the Trademark Office did not win. Yes by threatening to cancel my client’s registration, they made me wimp out and reveal a street number and street name. But in doing so, I revealed nothing more from a substantive point of view than I had previously revealed when I provided the exact latitude and longitude.
Yes, the Trademark Office won in the sense that they made me pay an extra $125 for the extra renewal fee. Yup, they won.
A third unfortunate thing is that all of this was completely unnecessary. Back when the Trademark Office got all wound up about the need to Do Something About Those Many Fraudulent Foreign Trademark Applications, the Trademark Office should have reached out to the trademark applicant and practitioner community. Many of us would have been glad to help, for example pointing out easy cost-free ways to identify the use of mail drops. But the Trademark Office did not reach out to the trademark applicant and practitioner community, and indeed spurned many offers from members of that community. Instead, the Trademark Office devised its new rules completely without any input from outside, devised “no-post-office-box” rules that made no sense, and implemented those rules in dumb ways. The Trademark Office has needlessly antagonized many members of the trademark community, putting many members of the trademark community in the position of feeling that they have no choice but to push back in highly visible ways to various missteps by the Trademark Office.
Anyway so the takeaway is, if your client wants to use a post office box, all that you need to do in the area of revealing the domicile is to provide a street name and street number and the county and state. No zip code. That will satisfy the Trademark Office on the domicile revelation requirement. And the Trademark Office will then suck it up and will use the post office box address.