This blog post describes some most recent developments in the business of the Trademark Office granting $100 petitions for trademark applicants who do not want to tell Trademark Office employees exactly where they sleep at night. This blog post talks about the privacy situation where the named applicant is a legal person (such as an LLC) rather than a natural person (a human being).
Readers will recall my many blog posts on the topic of the Trademark Office wanting to know exactly where you sleep at night. On the patent side, it is enough if you reveal to the USPTO the city and state where you sleep at night (or, as in my case, since I do not live in any city or town, the county and state). But that’s not good enough for the Trademark Office — they want to know exactly where you sleep.
Shortly after February 15, 2020, the Trademark Office came up with the CAR form and a box that you could “uncheck” if you were comfortable telling Trademark Office employees where you sleep, but merely did not want the street address where you sleep to be published in TSDR. If you uncheck the appropriate box in the CAR form (or in a corresponding place in the TEAS form for filing of a new trademark application), the Trademark Office says they will not publish your “sleep at night” street address in TSDR. But this unchecking of the appropriate box does not do away with the Trademark Office employees wanting to know where you sleep at night.
One concern of some trademark applicants and registrants, from the privacy point of view, is a desire not to reveal their “sleep at night” address to Trademark Office employees. There is also a concern that the Trademark Office has not said what it would do if some third party were to file a FOIA request seeking to learn a “sleep at night” address of a trademark applicant or registrant. There is also a concern about the chance, however small, of a data breach occurring. For some trademark applicants and registrants, there is a further concern as to whether the Trademark Office has forwarded or will forward this “where you sleep at night” information to the Department of Commerce as described in the Federal Register notice of July 11, 2019.
And by now there seems to be a sort of uneasy truce between some trademark applicants and registrants who are natural persons (human beings) and the Trademark Office. The uneasy truce is that where the applicant or registrant is a natural person, and where the applicant or registrant does not mind handing over a $100 petition fee to the Trademark Office, it seems by now in September of 2020 to be routine that the Trademark Office will grant the petition on the thinnest of showings regarding personal safety or privacy. It seems the filer of the petition need not say more than that he or she is petitioning out of a concern for personal safety or privacy.
Today’s blog article talks about fact patterns where the named applicant is not a natural person, but where the Trademark Office’s desire to know exactly where you sleep at night nonetheless leads to safety or privacy concerns. I am talking about the fact pattern where the named applicant is a legal person. If the owner is a legal person, then the information demanded by the Trademark Office (termed “domicile address”) is the revelation of the place where “the entity’s senior executives or officers ordinarily direct and control the entity’s activities and is usually the center from where other locations are controlled”. It will be appreciated that for many small startup businesses, there may be only one or two senior executives or officers, and the place where these things happen is extremely likely to be someone’s home. In other words, for many small startup businesses, when the Trademark Office demands to know the domicile address of the legal person (the legal entity), this works out to be the same thing as demanding to know where some natural person sleeps at night.
Today’s blog article talks about the observed behavior of the Trademark Office when a trademark applicant or registrant that is a legal person files one of these $100 petitions, with a goal of not revealing to Trademark Office employees where the senior executives or officers sleep at night.
The observed behavior is that the Trademark Office mails out an “inquiry letter”. Here is actual language from an inquiry letter that the Trademark Office mailed out in one of my cases where the applicant was a small start-up company that happened to be an LLC, and had paid the $100 for such a petition:
Petitioner must provide additional evidence explaining how a limited liability company having its business domicile address of record with the USPTO but hidden from public view would present extraordinary safety and privacy concerns.
Without additional evidence and explanation, the petition is likely to be denied.
Put into plain language, the inquiry letter is saying something along the lines of “first of all we are skeptical that a mere LLC has any privacy rights at all, but even if an LLC were said to be entitled to some privacy rights, why isn’t it good enough just to ‘uncheck the box’ so that the domicile address is not published in TSDR?”
In the view of the applicant that I am thinking of here, there many things wrong with the question posed in the inquiry letter.
First, it is not at all clear that the “unchecking the box” truly keeps the where-you-sleep-at-night address “hidden from public view”. The Trademark Office has only committed that the “unchecking of the box” will prevent the where-you-sleep-at-night address from being published in TSDR. USPTO has many other online systems and e-commerce systems and APIs relating to trademarks, and the Trademark office has not committed to the “unchecking of the box” preventing the where-you-sleep-at-night address from falling into the wrong hands through one or another of those non-TSDR systems.
Second, the Trademark Office has not committed to what it would do if some third party were to file a FOIA request the fulfillment of which would reveal a where-you-sleep-at-night address.
Third, the Trademark Office has never really said how big the universe is of USPTO employees and contractors and consultants who may have access to the where-you-sleep-at-night addresses provided by trademark applicants and registrants.
Fourth, the Trademark Office has not clarified whether it has forwarded or will forward this “where you sleep at night” information to the Department of Commerce as described in the Federal Register notice of July 11, 2019.
Returning to the “inquiry letter”. The observed behavior of the Trademark Office, when a trademark applicant is a legal person, is to mail out such an inquiry letter. In the cases that I am thinking of, the applicant responded to the inquiry letter by pointing out that when the Trademark Office demands to know the domicile address of the legal entity this works out to be the same thing as demanding to know where some natural person sleeps at night. The applicant further explained that merely preventing publication in TSDR does not address all of the concerns of the natural person. The applicant mentioned the concerns about the non-TSDR online systems of the Trademark Office, the concerns about possible data breaches at the Trademark office, and the concerns about unknown numbers of Trademark Office employees and contractors who might have access to the where-you-sleep-at-night information.
Returning to the main point of today’s blog article … the observed behavior of the Trademark Office is that such a response to an “inquiry letter” seems to satisfy the Trademark Office, leading to a grant of the $100 privacy petition.
So yes, the price of privacy at the Trademark Office continues to be $100, and yes, the privacy seems to be available not only where the named applicant is a natural person but also where the named applicant is a legal person.