(Update: the appellant’s reply brief has now been filed – blog article.)
Hello folks. It will be recalled that the Commissioner for Trademarks has shown an extremely strong interest in knowing where you sleep at night, if you happen to be an applicant in a trademark application. And in a brief filed yesterday at the Court of Appeals for the Federal Circuit, the Commissioner has now doubled down on demanding to know where you sleep at night.
When the USPTO promulgated its rules demanding to know where you sleep at night, the rules did not get done right. The USPTO failed to follow the Administrative Procedure Act in promulgating those rules.
An entity called Chestek PLLC questioned USPTO’s rules that demand to know where you sleep at night, and in particular questioned USPTO’s compliance with the Administrative Procedure Act, filing an appeal that became case number 22-1843 at the United States Court of Appeals for the Federal Circuit.
It is recalled that you can see the appellant’s brief, which was filed in September of 2022, here. This established a due date for the USPTO to file its appellee’s brief, namely October 19, 2022.
The USPTO did not, however, get its appellee’s brief filed by October 19, 2022. Instead, the USPTO asked for and got an extension of time to file its appellee’s brief to December 2, 2022.
The USPTO did not, however, get its appellee’s brief filed by December 2, 2022. The due date for its brief drew near and the USPTO asked for and got a second extension of time to file its appellee’s brief, this time to January 31, 2023.
And indeed the USPTO did file its brief yesterday. You can see it here. The brief is 37 pages long.
I have been a lawyer for more than forty years. My opinion is only one person’s opinion, but my reaction is that the USPTO’s brief in this case is an embarrassment. More than half of the brief (up to page 24) is basically ad hominem criticism of the appellant, completely irrelevant to the actual issue on appeal which is whether the USPTO did or did not comply with the Administrative Procedure Act when it promulgated its rules requiring trademark applicants to reveal where they sleep at night. Only twelve pages of the brief (pages 25-36) actually try to address the issue on appeal.
Rather embarrassingly, some of those twelve pages still fail to address the issue on appeal, but instead spend time discussing things that the Trademark Office did later, after it promulgated the rules that are the subject of the appeal. After the rules got promulgated, the USPTO, in response to criticisms from the filing community, took some small steps to try to reduce the harm caused by its rules (for example changing its forms to reduce how many people would learn the revealed “sleep at night” address). But no amount of remedial action after a rule has been promulgated can undo the problem if the way that a rule got promulgated was a way that failed to comply with the APA.
What is clear is that the USPTO has doubled down on its demand to know where trademark applicants sleep at night.
Thanks for reporting this, Carl. The PTO’s brief may as well have stated, “The fact that TM attorneys were shocked that the final rule, in contrast to the proposed rule, requires the applicant to divulge where he sleeps at night, even after we promised in the proposed rule that we wouldn’t require that, isn’t evidence that the final rule significantly deviates from the proposed rule. It just shows what idiots TM attorneys are.”
I hope the Federal Circuit kicks them in the teeth over this.
Infuriatingly embarrassing.
What 37 CFR § 2.189 SHOULD say is:
An applicant or registrant *who is not represented by U.S. counsel* must provide and keep current the address of its domicile, as defined in § 2.2(o).
A rational and well-intentioned Commissioner should prefer a bit of minor rulemaking to this absurd litigation.