In Re: Chestek is an unfortunate decision in the Federal Circuit addressing what at first blush is another boring regulation. However, it concerns a rule change that many practitioners worry could mean life or death, and arguably was promulgated in a manner that didn’t allow for proper notice and comment by the public.
For decades, the USPTO has collected information from petitioners, including their address. Previously, the address could have been a post office box — but the USPTO established a new rule that required each petitioner to provide their domicile address. The USPTO’s justification was that “the growing problem of foreign individuals, entities, and applicants failing to comply with U.S. law,” forced this action. With such domicile addresses, they argued, they could confirm whether the applicant was from outside the U.S. and therefore required a U.S. attorney to represent them in connection with responding to office actions and renewals.
Trademark practitioners were unimpressed. Chief among our concerns was the obvious degradation of personal privacy. The apprehension is that, by making an applicant’s domicile public, some applicants might be endangered by unscrupulous actors. In particular, those who are being chased by abusive spouses or partners, as well as those who are celebrities or other individuals requiring privacy to be safe, could be stalked or harassed more efficiently by bad characters because their addresses are made public to the world. Additionally, some individuals (including the homeless) or companies can’t receive U.S. mail without a P.O. Box.
Another aspect of the rule change that rubbed many practitioners the wrong way is that the Trademark Office has promulgated these regulations without going through the normal process — as required by statute — to first ask for comments by the public, and then get the procedures approved. There’s a consensus that, while the USPTO held some sort of meeting about the rule change, it was not a proper hearing because the “tell us where you sleep” rule was added on without sufficient notice to the public. These were all requirements with which any federal agency is required to comply, but the USPTO skipped through them and the Federal Circuit, in this case, allowed it on the grounds that it was “merely procedural” and not something that determined whether a trademark could be registered. (Of course, the failure to provide a domicile address prevents the trademark from being registered.)
The implications are many, but perhaps the most worrisome is the establishment of a precedent that allows agencies to make up their own rules, as they wish, and just say it’s merely procedural.
The USPTO argued that other countries have such requirements, but the Court doesn’t specify which countries. Such countries might include, for example, China and other governments that keep close tabs on its citizens in a fashion that we don’t or shouldn’t condone.
To this day, the USPTO steadfastly maintains that 37 C.F.R. §§ 2.32(a)(2) and 2.189 don’t impact anyone’s rights and, therefore, they were permitted to do it for the sake of efficiency. Unfortunately, despite Ms. Chestek’s fighting the good fight, it appears to be a rule with which we are stuck unless “good cause” can be shown for any given application.
