Category: Trademarks

(Update:  the Commissioner for Trademarks says we will get all of our “asks”.  See blog article.)

(The letter has been sent.  See blog article.)

How often have you found that it is impossible to fit all of your docket number information into the docket number field in TEAS forms?

How often have you struggled to fit your client’s complete address into the small number of address fields in TEAS forms?

Please see a letter that will get sent on about Saturday, August 7, 2021 to the Commissioner for Trademarks.  Please consider adding your name to the list of signers.

The Commissioner for Trademarks has for more than two years now demanded to know, for each trademark applicant, “where you sleep at night”.  It’s not good enough to provide a post office box because, in the words of the previous Commissioner, “in most cases, a post office box address is not a domicile because you can’t live in a P O box.”  The Examining Attorneys always pounce on any trademark application for which the applicant’s address is a P O Box, demanding that the applicant reveal his or her “where you sleep at night” address.

The Commissioner does not, however, seem to act very consistently in his efforts to ferret out instances of an applicant failing to reveal where he or she sleeps at night.  

I pointed this out in a March 27, 2020 blog article entitled Trademark Office misses a chance to demand that a trademark owner reveal where it sleeps at night.  In that blog article I pointed out that the address provided by the applicant was the street address of the post office where the applicant’s P O Box was located.  The case proceeded to registration, and to this day the Commissioner has failed to force the applicant to reveal where it sleeps at night.

I pointed this out in a February 7, 2020 blog article entitled The Commissioner for Trademarks definitely discards the CMRA data that it receives from the USPS.  In that blog article I gave examples of cases where the USPTO actively disregarded information that it receives from the US Postal Service database that flags addresses that are CMRAs (Commercial Mail Receiving Agencies).  

Now in 2021, the interesting question is whether the Commissioner has perhaps finally gotten around to making use of the CMRA information that it receives from the USPS.  See for example this application which was filed on November 10, 2020 and that has just recently reached the desk of an Examiner.  In this application, the applicant lists its address as 6547 North Academy Boulevard #2266, Colorado Springs, CO 80918. Maybe tomorrow, maybe next week, maybe the Examining Attorney in this case will demand to know where the applicant sleeps at night.  I wonder if the Examining Attorney in that case will do so.

Anyone sitting at home in their pajamas can do the couple of mouse clicks that are required to find out (from the USPS zip code database) that this is the address of a Commercial Mail Receiving Agency (see screen shot).  Any competent computer programmer can write code that would do this lookup automatically in the USPS’s API for this database.  Here is what you see if you go to that address.  This is a Mail Center that offers “mail box rentals”.

See also this application where the applicant listed the same Mail Center address, and the Examining Attorney did not demand to know where the applicant sleeps at night.

You can do a TESS search for “(6547 )[OW] and (Academy)[OW] and live[ld]” and you will find no fewer than 2300 live US trademark applications for which the applicant has listed this Mail Center as its address.  I am astonished, in a good way, to see that in a few cases (for example this one) the Examining Attorney did figure out that the address is a CMRA.  But in the majority of cases (for example this one which is now registered) the Examining Attorney snoozed through it.

So it is quite clear that the Commissioner is not even now using the USPS API to flag applications that make use of CMRAs.  Yes, some individual Examining Attorneys occasionally check to see if a suspicious-looking applicant is making use of a CMRA.  But there is no consistent checking of the USPS database even now, a year after I first pointed this out to the Commissioner.

I was astonished to learn that there are now over nine hundred thousand pending US trademark applications. Continue reading “Over 900,000 pending US trademark applications!”

One of the things that a trademark owner has no choice but to be vigilant about is the risk that a bad person will try to steal the Amazon Brand Registry (“ABR”) rights connected with the trademark (blog article).  The usual way that a bad person will try to do this is by changing the email address that is on file at the USPTO for the trademark registration, then carrying out the ABR validation procedure (which involves Amazon sending an email message with a Secret Code Number to the email address on file) and then using the Secret Code Number to appropriate the ABR rights.  Recently one of my clients found itself the target of such an attempt.  The Trademark Office’s protective measure did not work, but fortunately IP Badger’s protective mechanism detected that the Trademark Office’s protective measure had failed.  Continue reading “Trademark Office disappoints; IP Badger delights”

(Update:  a letter has been sent.  See blog article.)

On July 2, 2019, the Trademark Office at the USPTO published a Final Rule stating that as of August 3, 2019, a trademark applicant would be required to reveal where he or she sleeps at night, in addition to stating his or her citizenship.  I believe the Trademark Office did this at least in part because of the politics surrounding the Executive Order 13880 of July 11, 2019.  In that Order, the then president wrote:

I disagree with the [Supreme] Court’s ruling, because I believe that the [Commerce] Department’s decision was fully supported by the rationale presented on the record before the Supreme Court.  The Court’s ruling, however, has now made it impossible, as a practical matter, to include a citizenship question on the 2020 decennial census questionnaire.

The then president ordered this:

I am hereby ordering all agencies to share information requested by the [Commerce] Department to the maximum extent permissible under law.

The Trademark Office is part of the Commerce Department and so was among the agencies subject to this order, and was thus subject to any requests from the Commerce Department about citizenship and domicile of trademark applicants.  I blogged about this several times, including here on May 29, 2020.

On January 20, 2021, the present president signed an Executive Order saying this:

Sec. 5. Revocation. Executive Order 13880 of July 11, 2019 (Collecting Information About Citizenship Status in Connection With the Decennial Census), and the Presidential Memorandum of July 21, 2020 (Excluding Illegal Aliens From the Apportionment Base Following the 2020 Census), are hereby revoked.

My hope is that the Trademark Office will now be able to amend its rule to relax the extent to which it demands to know where a trademark applicant sleeps at night.  The inquiry should only be needed in those limited circumstances that arise when a non-US applicant has failed to hire US counsel, or, to put it differently, where the Trademark Office suspects a non-US applicant is faking a US residence in an effort to avoid having to hire US counsel.  In any case where an applicant has hired US counsel, there should not be any reason, on or after January 20, 2021, for the Trademark Office to demand to know where the applicant sleeps at night.