(Update: the case is now before the Court of Appeals for the Federal Circuit)
(Update: a letter has been sent. See blog article.)
It is by now a couple of years ago that the Acting Commissioner for Trademarks promulgated a rule requiring each trademark applicant to reveal to the Trademark Office where he or she sleeps at night. Not simply the state where he or she sleeps at night, not just the city where he or she sleeps at night, but the exact street address where he or she sleeps at night. I call this the “where you sleep at night” rule. Yesterday there was yet another development on the “where you sleep at night” rule.
To do a good job of describing yesterday’s development, I need to provide a bit of background.
Many readers will recall the original supposed reason for requiring trademark applicants to reveal in such physical detail where they sleep at night. The Acting Commissioner had promulgated a rule requiring any applicant that was located outside of the US to hire a US attorney. The Acting Commissioner’s stated concern was that perhaps some non-US applicants were making use of a post office box in the US to try to avoid having to hire a US attorney. The idea was that for an application in which the applicant had not hired a US attorney, and had listed a post office box in the US, maybe forcing the applicant to reveal where he or she sleeps at night would smoke out that the applicant was actually located outside the US. This would then facilitate a next step of requiring the applicant to hire a US attorney.
The Acting Commissioner made no secret of her target — certain types of trademark applications filed by certain types of applicants located in a certain foreign country (“Target Applicants”). The idea was that forcing a Target Applicant to hire a US attorney would presumably reduce or eliminate such types of trademark applications. Surely the US attorneys would serve as a sort of filter mechanism, keeping “bad” trademark applications out of the system, right?
It might, then, be thought that in a trademark application where the applicant was already represented by a US attorney, there would not be any need to be so intrusive as to demand that the applicant reveal the street address where he or she sleeps at night. But no, in the months and years that have passed since the promulgation of this rule, the Acting Commissioner and now, the present Commissioner, have made clear that they absolutely still want to know exactly where every applicant sleeps at night, even if the applicant has already hired a US attorney. Indeed even if the application was filed by a US attorney in the first place, the Commissioner still demands to know where the applicant sleeps at night.
This all turns on the meaning of the word “domicile”. On the patent side, the USPTO does require that the inventor in a US patent application reveal his or her domicile to the USPTO. But the level of detail that the Commissioner for Patents requires the inventor to reveal is far less intrusive. Stated differently, on the patent side, “domicile” is defined merely to mean the city and state where the inventor sleeps at night. So for example I personally am a named inventor on nine granted US patents, and in none of those applications did the Commissioner for Patents require me to reveal “where I sleep at night” in any greater detail than to spill the beans on the state and the city. But the Commissioner for Trademarks interprets that same word “domicile” so differently as to require revealing to the Trademark Office not only the state and city but also the street address where the applicant sleeps at night.
It does not require much imagination to realize that a victim of domestic abuse or a target of a stalker might be concerned about revealing his or her “sleep at night” address. A celebrity, or a person concerned about the possibility of an attempted kidnapping of a family member, might likewise be concerned about having to reveal a “sleep at night” address.
Within the rules and present practices at the Trademark Office there are two levels of possible protection of the privacy of the trademark applicant.
Level 1. The “check box”. The TEAS forms have a check box that an applicant can uncheck to indicate that the applicant wishes to provide a mailing address that is non-identical to the applicant’s “sleep at night” address. The mailing address might be a post office box or might be an “in care of” address. If the box gets unchecked, then the TEAS form provides a separate set of fields in which the applicant provides the “sleep at night” address. The Trademark Office commits to not revealing in TSDR the “sleep at night” address from those separate fields.
Conspicuous by its absence in any statute or rule or other written communication from the Trademark Office is anything further about what, if any, protection the Trademark Office will afford beyond merely avoiding revealing the “sleep at night” address in TSDR. Would the Trademark Office do anything to protect a “sleep at night” address from being revealed to someone who had filed a FOIA request? The USPTO has never said. One presumes that the “sleep at night” information in USPTO’s databases, even if masked from display in TSDR, would nonetheless be visible to many USPTO employees and be visible to many personnel among USPTO’s contractors. The USPTO has never said what controls, if any, are placed on such access nor on the extent to which such employees or personnel might reveal such “sleep at night” information to others.
Level 2. The $250 petition. The second level of protection of security or privacy available to an applicant within the present rules and practices at the Trademark Office is the filing of a $250 petition asking that the applicant be permitted merely to reveal the state and, perhaps, the city where he or she sleeps at night, without having to reveal more. In such a petition, the applicant states that he or she is concerned for his or her privacy or safety, and tenders the $250 fee. Many such petitions have been granted, and I am not aware of any having been denied. Indeed this is what I have in common with Robert De Niro (blog article). He and I each filed such a petition, and each of us got excused by the Commissioner for Trademarks from having to reveal the street address where we sleep at night.
If the “where you sleep at night” rule were actually serving some valuable purpose, then I suppose I might have a reaction that it is okay to be so intrusive. But I am unable to see any proper balance in this rule as implemented.
For one thing, it seems to me that once the stated goal of forcing the applicant to hire a US attorney has been accomplished in a particular application, then the intrusiveness into the privacy of the applicant should cease. I have not seen anything in any communication from the Trademark Office justifying such intrusiveness in applications where the US attorney has been hired. The intrusiveness seems particularly inappropriate for those applications which were filed in the first place by a US attorney.
I also question the propriety of the particular rulemaking that led to this rule. Oversimplifying slightly, the way the Administrative Procedure Act says an agency is supposed to do rulemaking is that the agency is supposed to start with the publication of a Notice of Proposed Rulemaking that gives notice of the proposed rule. Concerned parties can then file comments. After considering the comments, the agency can promulgate a final rule. But the scope of the final rule is not permitted to go beyond the scope of the published proposed rule. Again oversimplifying slightly, the final rule here (together with the “exam guides” that followed) calls for revealing the street address where the applicant sleeps at night, while the proposed rule gave no hint that such an intrusive disclosure about the applicant’s “sleep at night” location was in the offing.
As far I can see, in the time since this rule come into force, all or nearly all of the Target Applicants have simply hired US attorneys and have proceeded with their filing activities. As best I can see, all or nearly all of the Target Applicants have variously either made use of the check box to mask their “sleep at night” addresses or have simply revealed their office addresses in their home country. Maybe this has reduced the flow of applications filed by Target Applicants, but if so, I have not seen such a reduction. The examination backlog at the Trademark Office stretches out these days to well past six months, and it has been that way for over a year. If the “where you sleep at night” intrusiveness had made a dent in the backlog, that would be one thing, but as far as I can see it has not. As best I can see, the “where you sleep at night” intrusiveness has mainly served to unnecessarily hamper the filing activities of, and diminish the privacy of, the rest of the trademark applicants who are not the Target Applicants. And, I suppose, the Trademark Office has probably collected quite a few $250 fees from applicants wishing to protect their privacy or security.
Yesterday’s development. Which brings us back around to yesterday’s development. You may recall that on August 7, 2021 I reported (blog article) that a trademark applicant had filed an ex parte appeal to the Trademark Trial and Appeal Board directed at the “sleep at night” rule. (You can see the TSDR record here and you can see the TTABVue record here.) Now the TTAB has issued a precedential opinion dated March 30, 2022 which you can see here. The TTAB affirms the Examining Attorney’s refusal-to-register.