Back on September 24th (blog article) a very high-up person in the Office of the Commissioner for Trademarks had telephoned me, promising me that Real Soon Now the Trademark Office would issue yet another Exam Guideline, doing the right thing about post office boxes. Unfortunately that has not happened. Trademark practitioners are starting to receive super-intrusive Office Actions demanding things like revealing the personal home addresses of clients. What can be done about all of this?
The original supposed justification for the Trademark Office busting the chops of applicants as to their “domiciles” was to try to force non-US applicants to hire US trademark counsel. And given the rule that a non-US applicant is required to hire US trademark counsel, the Trademark Office decided to try to smoke out non-US applicants that just happened to have rented a post office box in the US as a ploy to try to avoid having to hire US trademark counsel.
But all of these concerns on the part of the Trademark Office were, and are, by definition eliminated in any case where the applicant has already hired US trademark counsel. In such a case, common sense tells you that there is no need to bust the chops of that particular applicant about their mailing address. They already did the exact thing that the Trademark Office felt so strongly that everybody should do, namely they already hired US trademark counsel.
But even now the Trademark Office is maintaining its stubborn insistence that even in a case where the applicant already hired US trademark counsel, the Commissioner for Trademarks wants to know exactly where the applicant sleeps at night.
The Commissioner for Patents does not feel the need to be so nosy about the applicant’s personal life. Here is an excerpt from Form PTO/AIA/014, which is the official form by which the USPTO inquires into the personal life of the patent applicant (as compared with a trademark applicant). In this form, we see that the Commissioner for Patents does require a full mailing address, but that particular address is not required to be the location where the inventor sleeps at night. The Commissioner for Patents’ curiosity about the inventor’s personal life is satisfied if the inventor reveals nothing more than the mere city and state of the inventor’s residence.
But the Commissioner for Trademarks is not satisfied with just the city and state. In any case where the correspondence address is a post office box, it is now automatic that an Office Action gets mailed with a form paragraph. The form paragraph makes clear that the case is going to be declared abandoned unless the applicant reveals where he or she sleeps at night. In the case of a legal entity, the form paragraph clarifies that what must be revealed is the “location where the entity’s senior executives and officers ordinarily direct and control the entity’s activities.” For a small startup or sole proprietorship this is likely to be someone’s home address, a place where someone sleeps at night.
The Office Action also does not make very clear what the Commissioner plans to do with this information once it has been revealed. Yes, it will be published to the world in TSDR. But will the Trademark Office also delete the post office box address in its records and insert in its place the “direct and control” location address? What if this address is a place where the Post Office does not deliver mail? What if this address is a place that is not very stable, perhaps due to the uncertain finances and uncertain day-to-day plans of the small startup?
One of our clients facing such a form-paragraph Office Action is a very small nonprofit that is operated out of a person’s home. The person does not want his home address published to the world for reasons of personal safety. In that particular case, as far as we can see, the price of personal safety is $100. It turns out that to try to avoid being forced to reveal a home address, it is necessary to file a petition asking for “extraordinary relief” from the Commissioner for Trademarks. And the Commissioner will not consider the petition unless a $100 government fee is paid.
Another of our clients has an ordinary physical office but absolutely does not want to consent to receiving postal mail there. The client wants the Trademark Office to use the client’s post office box for any mail that the Trademark Office might feel the need to send to the client. This client’s reluctance to hand over a street address is tied in part to a lack of trust as to what the Trademark Office would do with the street address thereafter. For this client, our approach was to provide the precise latitude and longitude of the “location where the entity’s senior executives and officers ordinarily direct and control the entity’s activities.” We figure that this satisfies the requirement of providing the location, and it denies the Trademark Office the opportunity to run off and make use of a street address in ways that the client has not authorized such as for future correspondence.
Note that the latitude and longitude also provides more than enough information for the Trademark Office to work out whether the client is outside of the US (and thus can be forced to hire US trademark counsel if it has not already done so).
How are you dealing with the Office Actions in which the Trademark Office refuses to accept a post office box? Please post a comment below.