(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. I found this shocking at the time, and even now after the passage of almost a year, my sense of shock has not subsided.
What is this current status of this “tell us where you sleep at night?” requirement? Where did it come from exactly? To what extent can an applicant somehow protect his or her privacy and hold back from having to reveal where he or she sleeps at night?
Monday, Monday, 25, 2020 will be a federal holiday in the District of Columbia. This means the USPTO will be closed. This means that any action that would be due at the USPTO on May 25 will be timely if it is done by Tuesday, May 26, 2020.
Alert blog reader Michael Zall drew my attention to the following numbers which are easy to pull from the TESS database on the web site of the USPTO. The table shows year-on-year comparisons for new US trademark filings during particular date ranges. Compare March 2020 with March 2019, for example, and the number of new US trademark filings is down 14%.
Jan 1 to April 15
March 1 to March 31
2019
140753
43911
2020
126502
37608
percent drop
10%
14%
This observed drop is consistent with some slides that the USPTO trademark management presented to the Trademark Public Advisory Committee last Friday, as I will now discuss. Continue reading “US trademark filings are way down”
Sometimes the USPTO does things and I cannot immediately figure out the reason why. Here is one of them, brought to my attention by alert reader Dana M. Stangel. Today I logged in to pay an Issue Fee, and this big brightly colored banner appeared at the top of the USPTO web page. It says:
Temporary Increase to Credit Card Daily Limit
The daily limit per credit card account has increased from $24,999.99 to $99,999.99. The temporary increase will remain effective through June, 1, 2020.
Well in one sense of course I know exactly why the USPTO did this. It must be the novel coronavirus. Any time in Spring of 2020 that any government agency or large organization does any really big thing that is temporary and makes no apparent sense, the explanation is coronavirus. I get that.
But what exactly is going on here? How did the USPTO pick “times four” as the amount of the increase? How did USPTO pick June 1? Why was there ever a limit in the first place?
Upon some reflection I realized I know the answer. It has to do with credit card commissions, which government agencies generally intensely dislike having to pay.
Normally if you make an arrangement to be able to take credit cards as a mode of payment, the contract that you will have to sign will contain language forbidding you from charging the commission through to the customer. Saying this differently, the contract will contain language that requires you to absorb the commission. Our firm uses Stripe to process most of our credit card payments, and the commission that we incur is 2.9% plus 30¢ per transaction. And the standard Stripe contract requires us to absorb that commission.
Years ago many states passed laws giving special bargaining power to government agencies. They were able to force the credit card companies to modify the standard contract so that a government agency would be able to charge the commission back to the customer. You run into this every time you pay for a license plate for your car using a credit card, and you get dinged a “convenience fee” for the transaction.
When I was first in practice, the USPTO did not accept credit cards. The usual payment mechanism was the “deposit account”. You would send a check for five or six figures of money every few weeks to some address in Chicago and the USPTO would credit the money to your deposit account, and you would draw upon the deposit account when paying fees in patent and trademark cases. This worked okay for high-volume filers but was of course completely unworkable for pro se filers.
After many years of foot-dragging, the USPTO finally ceded to the inevitable and started accepting credit cards as a mode of payment. I imagine there was debate within the USPTO as to whether or not to charge convenience fees. The problem of course is that if on some particular day the USPTO were to start accepting credit cards without charging convenience fees, it would be completely predictable that some of the high-volume filers that used to use deposit accounts would switch to credit cards. This would instantly cut the USPTO’s revenues by a very predictable amount.
In recent times a typical year of fee collections might add up to around $3 billion. There are plenty of dinosaur corporations and law firms that continue to use deposit accounts as their chief way of paying USPTO fees. But many filers choose to collect the frequent flyer benefits or purchasing points or rebates that can be gotten by using particular credit cards to pay USPTO fees. I imagine that at least half of the fees paid to the USPTO are paid by credit card, or at least $1.5 billion annually. I assume the USPTO negotiates a better commission than the standard Stripe commission, but still it would be at least 2%. So the USPTO loses perhaps $30 million annually in credit card commissions.
This discussion helps to explain why there was this $24,999.99 limit in the first place. The point of the limit was to try to divert some fee payments away from credit cards (where the USPTO incurs commissions) and over to other payment modes such as deposit accounts and ACH transfers (where the USPTO does not incur such commissions).
I will tell you that at our firm, at least, the $24,999.99 has never actually diverted any of our USPTO spending away from credit cards! Whenever we smack up against that limit on a particular credit card at the USPTO, we simply move on and use another credit card. We have multiple credit cards set up in USPTO’s Financial Manager system for this purpose.
But anyway, yes, it is clear that USPTO’s announcement that this limit will temporarily be increased from $24,999.99 to $99,999.99 is basically the USPTO’s way of saying “due to the novel coronavirus we are willing to absorb more commissions than usual”.
Here is a UPS Store at 3020I Prosperity Church Road in Charlotte, North Carolina. It only takes a couple of mouse clicks to figure out that this address is a UPS Store, from the US Postal Service API as quoted below. (This street address is ratted out in the Postal Service lookup system to be a Commercial Mail Receiving Agency.)
The Trademark Office has made much of its desire to force each of its trademark applicants to reveal to the Trademark Office where he or she sleeps at night. Given that with a couple of mouse clicks, or a couple of lines of computer code, the Trademark Office could ferret out UPS Stores like this, why does the Trademark Office not do so? See for example trademark application number 88745467 (TSDR record) in which the Trademark Office mailed an Office Action yesterday. Conspicuous by its absence in the Office Action is any mention of the fact that the applicant has not revealed to the Trademark Office where it sleeps at night.
This reminds us of yesterday’s blog article where the Trademark Office similarly snoozed through a case of a trademark applicant having failed to reveal where it sleeps at night.
(Updated: Now on March 30, this case has passed Final Review prior to publication. The Final Review person also snoozed through the fact of the applicant having failed to reveal its domicile to the Trademark Office.)
The Trademark Office is so lacking in uniformity in its efforts to inquire into where a trademark applicant sleeps at night. Here’s yet another example of the Trademark Office letting an applicant get away with not revealing to the Trademark Office where it sleeps at night. This is the same Trademark Office that has told me that it will cancel my trademark registration unless I reveal where I sleep at night. Continue reading “Trademark Office snoozes through it again”
On March 8 I blogged that US filers filing documents at the International Bureau needed to pay extra close attention to what time it is in Switzerland. The reason is that in the US, Daylight Saving Time happened on March 8. But did not happen on that day in Switzerland. This meant that for the past three weeks, a US-based filer in (for example) the Mountain Time zone would be able to e-file in the IB as late as 5PM and still get a same-day filing date. This differed from the usual drop-dead time of 4PM.
As I have pointed out in earlier blog articles, the Trademark Office has been very inquisitive as to the street address where its trademark applicants sleep at night. I have also pointed out in earlier blog articles that to the extent the Trademark Office wants to be consistent and thorough about this, the Trademark Office should not discard the CMRA information which USPS provides to the Trademark Office.
The Trademark Office looks up every address of every trademark applicant in the USPS’s address verification API, and the USPS returns not only a verified address, but also a data field that reveals whether that address is or is not a Commercial Mail Receiving Agency. In other words the USPS rats out the applicant that is using a post office box or a UPS Store or a Mailboxes Etc. to avoid revealing where he or she or it sleeps at night.
click to enlarge
Here is a concrete example of the Trademark Office passing up a chance to force an applicant to reveal to the Trademark Office where it sleeps at night. It is US trademark application number 88745070 which you can see here. When USPTO looked up the applicant’s address, the USPS said “Y” in the CMRA field, as you can see here. In fact this address is a post office address. 101 West Goodwin Street is a US post office, and the number 3849 is the post office box of the applicant.
But the Trademark Office discarded that information. The Trademark Office has mailed an Office Action that says nothing about the need for the applicant to reveal to the Trademark Office where it sleeps at night.
I wonder whether the Trademark Office, subsequent to the posting of this blog article, will mail another Office Action requiring the applicant to reveal to the Trademark Office where it sleeps at night?
(Revised to reflect news from another trademark practitioner that sometimes the Trademark Office has indeed pursued “where do you sleep at night” inquiries for at least a few non-US applicants.)
One peculiarity that I have not seen fully explored until now is the observed fact that the desire on the part of the Commissioner for Trademarks to know the street address where a trademark owner sleeps at night seems to apply almost exclusively to trademark owners residing within the US.
The Office Actions in which the Commissioner for Trademarks demands to know the street address where the owner sleeps at night, the Office actions that are triggered by the use of a Post Office Box, happen almost exclusively only if the owner’s address is in the US.An owner of a trademark registration whose address is outside of the US, whose only address of record is a post office box, usually does not receive such an Office Actiondemanding to know where the owner sleeps at night. Stating this as clearly as possible, the Commissioner for Trademarks mostly enforces its rule about requiring revelation to the USPTO personnel of where the owner sleeps at night in the special case where the owner’s address is in the US.
You might think that this highly selective demand to know where a person sleeps at night might be explained by the requirement that an owner located outside of the US hire a US attorney. The idea might be that the Commissioner for Trademarks feels the need to know exactly where the owner sleeps at night so as to smoke out the owners whose domicile is outside of the US, since they are required to hire US counsel. The Commissioner for Trademarks would not want such a non-US owner to be able to evade the requirement of hiring US counsel by the stratagem of renting a Post Office Box in the US.
But that dog won’t hunt. The observed behavior of the Commissioner for Trademarks is that Office Actions like this are being mailed in cases where the owner is located in the US and has hired US counsel.In other words even if the owner has hired US counsel, thus making it completely irrelevant whether or not the owner’s domicile is in the US for purposes of figuring out whether or not the owner should be required to hire US counsel, still the Commissioner for Trademarks demands to know the street address where that US owner sleeps at night.
And again to emphasize a point made above, in those cases where the owner has admitted that he or she resides outside of the US (and has of course hired US counsel), and where the owner has made us of a Post Office Box located outside of the US, inexplicably the Commissioner for Trademarks has only seldom mailed an Office Action requiring the owner to reveal where (outside of the US) the owner sleeps at night.
It is mostly in the special case where the owner is in the US that the Commissioner for Trademarks demands to know where the owner sleeps at night.
The Rules that the Commissioner uses to justify this inquisitiveness into the street address where the owner sleeps at night do not exempt owners located outside of the US. If the Commissioner were to carry out the Rules consistently, the Commissioner would be mailing out such Office Actions in all cases where a post office box located outside of the US was being used.
I wonder why it is that the Commissioner enforces those Rules so inconsistently depending upon whether the trademark owner’s post office box is inside the US or outside the US?
