It is a wearisome business trying to guess what the USPTO will do next in its demands to know where the trademark applicant sleeps at night. It is recalled that the USPTO’s stated reason why it supposedly needs so badly to know where the applicant sleeps at night is so that the USPTO can figure out whether the applicant is faking a US domicile to avoid having to retain a US attorney. Common sense would suggest that if, prior to the mailing of the Office Action, the applicant had already taken the step of retaining a US attorney, then there would be no reason to require the applicant to reveal where he or she sleeps at night. Indeed in many cases the trademark application was filed in the first place by a US attorney, so that at no point during the pendency of the application would this inquiry into the applicant’s sleeping habits have been needed.
In one recent development, the USPTO doubled down on its policy of inquiring into applicants’ sleeping habits, filing its appellee’s brief in a litigation against the USPTO about this policy. (See blog article.) But in another development, the USPTO has blinked a little bit.
About nine months ago, on May 22, 2022, one hundred and eleven trademark applicants and practitioners wrote a letter to the Commissioner for Trademarks, David Gooder asking the Commissioner to back down on its demands to know where the applicant sleeps at night. One of the points made in the letter was this:
For an applicant that is a legal person, the Office’s strained interpretation of “domicile” is such that the information demanded by the Office (termed “domicile address”) is the revelation of the place where “the entity’s senior executives or officers ordinarily direct and control the entity’s activities and is usually the center from where other locations are controlled”. It will be appreciated that for many small startup businesses, there may be only one or two senior executives or officers, and the place where these things happen is extremely likely to be someone’s home. In other words, for many small startup businesses, when the Office demands to know the domicile address of the legal entity, this works out to be the same thing as demanding to know where some natural person sleeps at night.
Now comes a recent backing-down by Commissioner Gooder. A new form paragraph appears in recent Office Actions:
[One option for an avoiding having to explain where a person sleeps at night is t]o provide a detailed explanation that applicant has no fixed physical address. If applicant has no physical headquarters where its senior executives or officers ordinarily direct and control the business (e.g., because the business is conducted virtually), applicant should state for the record that applicant has no fixed physical address and provide a detailed explanation of the circumstances. To provide this explanation, open the correct TEAS response form and enter the serial number, answer “yes” to question 3, and on the “Additional Statement(s)” page, in the “Miscellaneous Statement” field, enter the referenced explanation in the text box.
The timing of the establishment of this new form paragraph, a few months after Commissioner Gooder received the letter from one hundred and eleven trademark applicants and practitioners, seems unlikely to be mere coincidence. It certainly looks like this was a sotto voce response to the letter. Of course what would have been nice, even courteous, is if Commissioner Gooder had gone to the trouble to acknowledge this to the one hundred and eleven applicants and practitioners. But to this day, Commissioner Gooder has never answered that letter.