The Commissioner for Trademarks demands to know where I sleep at night

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.

One thing about these petitions is that if the Trademark Office wants to be tough about it, the Trademark Office can win simply by running out the clock.  The office of trademark petitions could simply toss this petition into the freezer and allow enough time to pass that the registration gets canceled for non-renewal.  This is not an idle concern, since there are petitions just like this petition, that were filed as long ago as September of 2019, that have not yet been ruled upon by the Commissioner for Trademarks.

If you’d like to follow this case or load it into your Feathers, here is the TSDR link.

One of the points that I made in this petition is that just like the Commissioner for Trademarks, the Commissioner for Patents has a requirement that the inventor reveal his or her domicile, as a precondition of obtaining a granted US patent.  But the Commissioner for Patents defines “domicile” as the “city and state” where the inventor resides.  The Commissioner’s definition of “domicile” is not unduly intrusive into the personal life of the inventor.  I pointed out in this petition that I am a named inventor on nine granted US patents and in none of those nine patent applications did the Commissioner for Patents feel the need to make me reveal to USPTO personnel the street address where I sleep at night.  See for example US patent number 8,268,145 in which it satisfied the Commissioner for Patents that I revealed my domicile to be Summit County, Colorado.  (My domicile is in an unincorporated part of Summit County, Colorado, not in any city or town.)  

In the present petition I revealed to the Commissioner for Trademarks the same amount of detail about my domicile as I have in the nine applications to the Commissioner for Patents that led to granted US patents for which I am an inventor.

I noted that while the USPTO has offered some indication that it will attempt to keep such sensitive information from being visible in TSDR, USPTO has not provided any assurances that USPTO would protect this sensitive information in the event of a FOIA request. Nor has USPTO provided any assurances that USPTO would protect this sensitive information in the many other systems other than TSDR that are available to the public through a variety of APIs and public resources. The USPTO has not provided any explanation or commitment as to whether or how such sensitive information would be protected, if at all, within the USPTO itself and among the many employees and contractors who work at the USPTO.

The trigger for such Office Actions is, of course, the use of a Post Office Box as the mailing address for the owner of the trademark registration.  In my own case this use of a Post Office Box is not idle or arbitrary — the US Postal Service does not delivery mail in Summit County, Colorado to street addresses.  If a resident of Summit County wishes to receive delivery of postal mail, the resident must obtain and use a Post Office Box.

It will be interesting to see what happens to this petition.  Will the Commissioner for Trademarks “run out the clock” and simply cancel my trademark registration?

3 thoughts on “The Commissioner for Trademarks demands to know where I sleep at night

  1. Carl: I hate to say it without sounding facetious but thank you for the comic relief!

    I would also respond by citing to 15 USC § 1055 which states:

    Where a registered mark or a mark sought to be registered is or may be used legitimately by related companies, such use shall inure to the benefit of the registrant or applicant for registration, and such use shall not affect the validity of such mark or of its registration, provided such mark is not used in such manner as to deceive the public. If first use of a mark by a person is controlled by the registrant or applicant for registration of the mark with respect to the nature and quality of the goods or services, such first use shall inure to the benefit of the registrant or applicant, as the case may be.

    I would also cite to 15 USC § 1127 which states

    [T]he term “related company” means any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used.

    Let me know your thoughts.
    Miriam

  2. Hopefully, the new Commissioner is reviewing the history of the domicile issue and your OA is residue of the former Commissioner and Interim Commissioner. Unfortunately, the intransigence may be embedded in the bureaucracy just below the Commissioner who likely would be the main source of the new C’s info about the problem.

    Not only have all the petitions for exceptions apparently been shelved, but so has Pam Chestek’s excellent “Petition for Rulemaking” from six months ago (which the USPTO didn’t even favor by acknowledging with a response). All of which suggests revisiting David Boundy’s offer to lead a serious action, i.e., to “hit the USPTO over the head with a 2×4.” He needed both contributions of $ and a few people to committing time. I suspect the latter was the key impediment. so perhaps folks, so maybe folks now have the time as they’re freed up from travel, commuting and inperson meetings by the coronavirus strictures

  3. Pingback: Trademark Office snoozes through it again - Ant-like Persistence

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