Category: Trademarks

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

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.

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”.

Surely every reader of this blog, when learning of the Commissioner’s new Rules, realized that there are two ridiculously easy ways to circumvent this smoking-out process. Continue reading “Helping the Commissioner for Trademarks to smoke out non-domicile mailing addresses”

I have a client whose office is in a place that lacks reliable USPS postal delivery.  Because of the unreliability of the USPS postal delivery to the client’s office, the client uses a post office box to receive its mail.  For decades this client has been able to use its post office box in its relationship with the Commissioner for Trademarks.  Many of the trademark registration certificates from the USPTO that sit in my client’s safe-deposit box, bearing a gold seal and the signature of the Director of the USPTO, list my client’s post office box as the registrant’s address.  Each six-year and decade renewal that this client has filed in recent years years has repeated my client’s post office box as its address.

But not any longer.  On July 2, 2019, the USPTO published its Federal Register Notice Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants.  This notice promulgated et alia new Rules which the Commissioner construes as making it impossible for a trademark applicant or registrant to receive correspondence at a post office box.  And despite having been given multiple opportunities in recent months to soften its position on this, the Commissioner now has doubled down on its refusal to permit the use of a post office box to receive correspondence. Continue reading “Commissioner for Trademarks doubles down on “no post office boxes””

Readers will recall my postings here and here and here about the Trademark Office’s recent Examination Guideline requiring trademark applicants to reveal to the public where they sleep at night.  

Within recent weeks (see my blog post of December 29, 2019) I have filed petitions in some of my cases asking that the applicant be permitted to withhold this information from the public for reasons of personal privacy and safety.

I was dismayed to hear in the e-Trademarks listserv from a practitioner who reports that he filed such a petition on September 13, 2019 in one of his cases, and he recently telephoned the Office of Trademark Petitions to ask the status of his petition.  He says he was told that there are many such petitions, and they are all “on hold”, and that we should not expect decisions on such petitions any time soon.

Have you had to deal with this?  Have you filed such a petition?  Was it granted?  Please post a comment below.

On November 18, 2019 I posted this blog article reporting the quite remarkable news that IP Australia had joined the DAS system for purposes of trademarks.  Even now in January 2020 no other Office is a member of DAS for purposes of trademarks.  In that blog article I proved to you that IP Australia must really be an Accessing Office for purposes of trademarks, and I did it by posting an actual Certificate of Availability from the DAS system, showing that US trademark application number 77087422 is available to IP Australia through the DAS system.  But more than a month has passed during which no trademark practitioner raised the following questions:

1. How did I obtain this Certificate of Availability?
2. If the USPTO is not a depositing Office for trademarks, then how is it that this US trademark application is available to IP Australia in DAS?  
3. To obtain this Certificate, I had to somehow get a DAS access code to plug into the DAS system. Where did I get this DAS access code, given that the USPTO does not provide DAS access codes for trademark applications?
4. And most importantly, how is it that no reader of this blog even caught on that these questions needed to be asked?

If you somehow figure out or already know the answers to questions 1-3, please post a comment below.  In doing so, you will gain recognition as a truly trendy, modern, and up-to-date trademark practitioner.