I am reminded over and over again of the striking generosity and collegiality of the trademark practitioners who hang out in the e-Trademarks listserv. Recently one member of the listserv asked (paraphrasing):
Our client’s trademark application received a Lanham Act § 2(d) refusal based on a senior registration which was last renewed in 2012. We hired a trademark investigator who reported being unable to find any evidence that the senior mark is in use. Our client wants to proceed with a Petition to Cancel that registration the Trademark Trial and Appeal Board.
Here’s the question: we have a pretty good report from the investigator regarding lack of web presence, business listings, address follow-up, etc. showing that the mark isn’t in use. Does it make sense to put any of that into the pleading, by factual allegation, attaching an affidavit, or otherwise? I frankly don’t expect a response but anything’s possible.
Many members of the listserv offered comments about how much to put into the Petition. I’ll summarize some of the comments here, and I will add a couple of thoughts. Oh, and if you are a trademark practitioner, and if you have not yet joined the e-Trademarks listserv, what’s your excuse? Maybe you should join.
Earlier this week, one hundred ninety-nine trademark practitioners wrote to the Acting Commissioner for Trademarks expressing concerns about the Examination Guide 1-20 dated February 6, 2020 that would require trademark applicants to reveal their personal email addresses to the USPTO, which would then publish those email addresses. You can see the letter here. The bad thing that was imminent was that on Saturday, February 15, 2020, trademark applicants would have to do this.
The Assistant Commissioner blinked. This happened at about 4:32 PM on Friday, February 14, 2020, 28 minutes before closing time for the week at the USPTO. Now there is a revised Examination Guide 1-20. You can see the February 14, 2020 version of Examination Guide 1-20 here.
Here is how the Assistant Commissioner characterized the revision:
The USPTO has recently heard concerns from some stakeholders regarding the potential for misuse of owner email addresses for owners represented by an attorney. In order to address these concerns, and balance them against the need for contact information concerning registrations, the USPTO is reissuing the examination guide issued February 7, 2020. The revisions to the guide remove the requirement that an applicant represented by counsel must regularly access and review the email account provided. This change clarifies that Trademark owners who are represented by counsel may provide an email address of their choice in the Trademark owner email field of Trademark filings, including an email address created specifically for this purpose by the owner or their attorney or an email address that is set up to only receive emails from the USPTO. The email address cannot be identical to the listed primary correspondence email address of the applicant’s or registrant’s attorney.
The USPTO notes that a pro se or unrepresented Trademark applicant’s or registrant’s “owner email address” will be the same as the applicant’s or registrant’s “correspondence email address” and will be the address to which the USPTO sends all notifications and communications.
The USPTO is continuing to explore additional improvements, including potentially masking email addresses, and will provide notice of any such system updates in the future.
The trademark community has averted at least some of the great harm that would have flowed from this ill-conceived Examination Guide, but at great cost. One of the costs was that one hundred ninety-nine trademark practitioners had to put aside their regular activities for much of Sunday and much of Monday to draft and revise and sign this letter.
Readers will recall my recent blog post where my client wanted to renew a trademark registration, but my client did not want to let the Trademark Office start using a street address for postal correspondence. My client wanted the USPTO to continue using a post office box for postal correspondence, just as the USPTO had done for the past decade. After several months of trench warfare, the Trademark Office blinked. The Trademark Office has given up on trying to deny our client the ability to use its post office box, and we have our renewal. We won, but it is unfortunate that it took months of trench warfare and a lot of time and money to win. Continue reading “Trademark Office blinks on domicile address”
I dropped off a Federal Express courier package just now. Inside is this letter to Meryl Hershkowitz, the Acting Commissioner for Trademarks. You can track the package here. Barring some surprise it should be delivered at the Trademark Office tomorrow (Wednesday, February 12) by 10:30 AM.
The substantive content of the letter will be no surprise to the Acting Commissioner, because I emailed a PDF of it to her yesterday as you can see here. In other words she and her colleagues have already had twenty hours to consider the substantive content of the letter. But what will be different when the courier package arrives tomorrow is that the Acting Commissioner and her colleagues will have an opportunity perhaps for the first time to see how many signers we ended up with (one hundred and ninety-nine) and how many trademark applications they collectively filed and/or prosecuted to issuance in the past decade (one hundred ninety thousand) and how much money they have collectively paid to the USPTO in the past decade (one hundred million dollars).
She will also see the names of the signers. My guess is that she and her colleagues will recognize many names of trademark practitioners whom they respect and have known for many years, indeed decades. My guess is that she and her colleagues will recognize names of law firms from which some of the signers are drawn.
There are not words sufficient to express how honored I feel to be part of this online community of trademark practitioners who gave of their time and their energy and their professional reputations to tell the Trademark Office things that perhaps the Trademark Office did not want to hear.
The document triggering this letter is an Examination Guide that the Trademark Office made public on the evening of last Thursday, February 6. The document revealed for the first time some measures said to be planned to take effect a mere nine days later, on Saturday, February 15. The honor that I feel being part of this online community of trademark practitioners is only made stronger by the realization that the signers managed to accomplish this drafting and revising and finalizing and signing in a mere three days. This leaves a few days remaining between now and February 15 during which, it is hoped, the Assistant Commissioner and her colleagues may revisit and perhaps even revise or postpone the plans set forth in the February 6 document.
Here is the PDF file that I emailed to Acting Director Meryl Hershkowitz earlier this evening.
And here is the email that I received back from her.
Now what needs to happen next, folks? What needs to happen next is that an infinite number of trademark practitioners and trademark applicants need to e-sign the letter. To do this, click here. The opportunity to sign is open until mid-afternoon tomorrow Tuesday February 11th. Please consider signing.
What will happen is (hopefully) that lots of additional people will e-sign.
Okay, folks, the letter to the Acting Commission for Trademarks is now locked, but for correction of clear errors such as misspelled words or factual mistakes. There is a new paragraph in the middle about the rulemaking timeline and I would be grateful if people can check it for correctness.
Anyway the point now is to round up a lot of signatures. As of just now on Monday afternoon we have more than eighty-five signers who collectively represent about eighty-seven thousand trademark filings and prosecutions-to-issuance over ten years and who collectively represent about sixty million dollars in fees paid to the USPTO over ten years.
So let’s please have a real push now to get as many signers as possible. Of course one cannot know for sure what might make a difference to the Acting Commissioner for Trademarks, but having a larger number of signers might make a difference.
To see the letter, and to see how to sign it, click here.
Hello blog readers. I imagine readers of this blog have been following the new Examination Guide which was published just this past Thursday February 6, and which will take effect this coming Saturday February 15. According to the Guide, starting on this coming Saturday a trademark applicant, even if represented by an attorney, will be required to disclose his or her personal email address in the US trademark application. The email address will be published in TSDR in the “documents” tab. This will of course get harvested by scammers and spearphishers and worse.
My best guess is that many readers would react to this with the feeling that the Trademark Office needs to mask the email addresses, just like it masks the attorney bar information.
With that in mind, an informal group of trademark practitioners is going to send a letter to the acting Commissioner this coming Tuesday evening. She would find it on her desk on Wednesday morning.
The point of this email is to let you know of the effort. If you would like to join the informal effort, you can. See blog.oppedahl.com/?page_id=5405 .
In a previous post, I tried to be helpful to the Commissioner for Trademarks in her (now his) efforts to smoke out instances of foreign applicants using non-domicile addresses to avoid having to hire US trademark counsel. I noted that it is already an integral part of the Office’s processing of every newly filed US trademark application to run the applicant’s mailing address through an API (application programming interface) that the USPS provides free of charge to the USPTO (and to everyone in the world). This particular API is called the “Address Information” API. The USPTO uses it to “standardize” the mailing address of the applicant, and among other things this forces the mailing address to be all capital letters even if it was originally entered with a mix of uppercase and lowercase letters. It forces the word “Street” to be abbreviated “ST”.
And this API provides to the USPTO a data field called CMRA (“Commercial Mail Receiving Agency”) with a value of either “Y” or “N”. The value will be a “Y” if the address is a post office or a Mailboxes Etc or a UPS Store some other “mail drop” kind of mailing address.
The Commissioner’s office has made clear that it wishes very much to smoke out applicants whose domicile is actually outside of the US, but that are using a post office box in the US or an “in care of” address in the US or some other non-domicile mailing address in the US as a way of evading the Commissioner’s requirement that such a foreign applicant retain US trademark counsel. The Commissioner for Trademarks was quoted as saying “… in most cases, a post office box address is not a domicile because you can’t live in a PO box.”
In my blog article of a couple of days ago I said that so far as I was aware, the USPTO actively discards the CMRA information that USPS provides to the USPTO in these “Address Information” API lookups.
Anyway one might have wondered if maybe the USPTO had actually been making use of the CMRA field and maybe I was simply unaware of it when I published that blog article. And now we have our answer.
The answer is, I am correct that the USPTO presently fails to make any use of the CMRA data from the USPS. Here is an actual case where, if the USPTO had been making use of CMRA data, there is no doubt that the USPTO would have bounced a trademark renewal. Instead, the USPTO snoozed through the use of a mail drop.
It is US trademark registration number 3739329 (TSDR record) which was registered January 19, 2010 meaning that the ten-year renewal needed to get done by January 19, 2020 (a few weeks ago). The registrant’s mailing address at the USPTO is:
1360 Clifton Ave.
PMB 340
CLIFTON, NJ 07012
click to enlarge
Lots of folks would instantly recognize the “PMB” element of the mailing address as a telltale that the address is a mail drop. PMB stands for “Private Mail Box”. One mouse click in any search engine immediately reveals that 1360 Clifton Avenue is a UPS Store. Even without the effort of a mouse click, just looking at the address reveals the “PMB” that tells you it is a mail drop.
But the point I am making here is that the USPS API told the USPTO that this address was a Commercial Mail Receiving Agency. You can see this from the screen shot at right. And the USPTO actively discarded this piece of information.
From TSDR you can see that the Trademark Office did make a half-hearted attempt to see if this registrant was a covert foreigner. The Trademark Specialist in the Post-Registration Branch mailed an Office Action on January 24, 2020 saying this:
The post registration filing lists the owner as an individual and specifies the owner’s domicile as a post office box instead of a street address. In most cases, a post office box is not acceptable as a domicile address because it does not identify the location of the place the owner resides and intends to be the owner’s principal home/the owner’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities. Thus, the owner must provide its domicile street address. Alternatively, an owner/holder may demonstrate that the listed address is, in fact, the owner’s/holder’s domicile.
It’s not really possible to work out from the TSDR file what exactly prompted the Trademark Specialist to send out this form paragraph, but my best guess is it was the telltale “PMB” in the mailing address.
So how did the registrant respond to this Office Action? Did the registrant respond (as one of my clients did recently) by providing the exact latitude and longitude of the registrant’s office? No, the registrant responded by deleting the “PMB 340” information from the mailing address. What remained after the registrant’s update was the exact same address of 1360 Clifton Avenue in Clifton, New Jersey.
After this update, two things happened. First, the Trademark Specialist mailed out a Notice of Acceptance of the renewal. This happened just yesterday, on February 6, 2020, and it is that event that prompted today’s blog article. In addition, I am astonished to report, the Trademark Specialist actually left the “PMB 340” information in place in the mailing address in the USPTO’s official records.
But most importantly, from all of this it is quite clear the USPTO did actively discard the “Y” value in the CMRA field of the USPS data. And it is clear that the USPTO does not train its Post-Registration people to make any use of the CMRA information.
This registrant used a mail drop, and the Commissioner of Trademarks gave this registrant a pass on its use of a mail drop. Meanwhile for a renewal filed by one of the clients of my firm, the Commissioner has formally stated that one of my clients will see its trademark registration canceled for refusing to reveal its domicile address. One wishes the Commissioner would be consistent about such things.
These Tote Boards rank the top patent and trademark firms for carrying out filings in 2019 in these categories. The 2019 Toteboards join the previous fifteen Toteboards which go back as far as 2012.
In her new rules that went into effect on July 2, 2019, the Commissioner for Trademarks made clear that she wants to smoke out any foreign trademark applicant that is using a mailing address that is not the applicant’s foreign domicile address, so as to avoid having to hire US counsel. The Commissioner for Trademarks was quoted as saying “… in most cases, a post office box address is not a domicile because you can’t live in a PO box.” Until now, the Commissioner’s way of smoking out such non-domicile mailing addresses has been extremely unsophisticated — two tests are applied:
does the address listed in the trademark application explicitly say “box” as in “post office box”? or
does the address say “in care of”?
When either of these two telltales is seen, the Examiner’s training since July 2, 2019 has been to require the applicant to reveal the applicant’s “domicile” address. One form paragraph gets used if the address contains the forbidden characters “P O Box” and another form paragraph gets used if the address contains the forbidden words “in care of”.
