MarkIt to Market® – June 2024: Home Is Where the Domicile Address Requirement Is | Sterne, Kessler, Goldstein & Fox P.L.L.C.
In 2019, the United States Patent and Trademark Office (USPTO) introduced Trademark Rule 2.189 (37 CFR § 2.189) as part of its larger efforts to combat fraudulent filings and unauthorized practices. Under the rule, all trademark applicants, registrants, and proceeding parties must provide their “domicile address” in trademark filings, so the USPTO can determine whether they are a foreign-domiciled party that must be represented by a U.S.-licensed attorney.
For an individual, a domicile is defined as the “permanent legal place of residence, which is the place the person resides and intends to be the person’s principal home”; a company’s domicile is the “principal place of business, which is the entity’s headquarters where its senior executives or officers ordinarily direct and control the entity’s activities.” 37 C.F.R §§2.2(o)-(p); TMEP § 803.05(a). The USPTO further clarified these requirements and the procedures for evaluating provided domicile addresses in the August 2023 “Examination Guide 3-23: Examination Procedures for Reviewing Domicile Addresses,” as further detailed in our firm’s August 2023 article.
The domicile and U.S. counsel requirements were warmly welcomed by the U.S. trademark bar at their 2019 enactment, given the vast increases in inaccurate and potentially fraudulent trademark filings seen in recent years. More recently, however, many attorneys and trademark owners are becoming increasingly concerned that the USPTO is perhaps going a bit too far with the domicile requirement—given its intended purpose of simply determining whether the trademark party is a U.S. or foreign entity requiring U.S. counsel, and the potential risks involved with requiring personal home addresses for many parties.
After the August 2023 Examination Guide’s release, trademark owners began receiving a notable increase in USPTO Office Actions and inquiries regarding the sufficiency of a provided domicile address—even if the trademark party was both domiciled in the U.S. and represented by U.S. counsel. In particular, the Examination Guide dictates that the domicile address must identify an actual street address—Post Office boxes, commercial mail/office addresses, and the like are not acceptable—and that examining attorneys must conduct internet searches to make this determination.
Given the post-COVID workplace shifts in which many businesses are “directed and controlled” from home offices, this presents difficulties for some trademark parties, who then face no choice but to provide their personal home address in response to such an Office Action. This conundrum becomes even more frustrating when considering the constant influx of increasingly sophisticated trademark scam artists, who are perpetually probing for—and finding—weaknesses in the USPTO’s technology. Just last month, numerous trademark filers and their counsel received a data security notice from the USPTO that their domicile addresses (which are purportedly kept “masked” and hidden from public view) were “inadvertently exposed” as part of a bulk data set, during the USPTO’s transition to a new IT system.
Also concerning is the fact that trademark parties have very little flexibility when it comes to the domicile address requirement, other than filing a petition to the Director of the USPTO if the reluctance to provide a domicile address stems from (a) the lack of a fixed physical address or (b) an “extraordinary reason,” such as a personal safety concern.
Although more practitioners are starting to question the recent rigorous enforcement of the domicile requirement, one attorney has been on a quest to challenge the requirement since 2020, and is now petitioning the U.S. Supreme Court to take up her case. Pamela Chestek of Chestek PLLC in Raleigh, NC applied to register the mark CHESTEK LEGAL in 2020, providing a P.O. Box as the firm’s domicile address. The examining attorney refused the application for failure to comply with 37 C.F.R. § 2.32 (requirements for a complete trademark application) and 2.189 (requirement to provide domicile address), and Chestek appealed to the Trademark Trial and Appeal Board (TTAB) on the basis that the rules were improperly enacted under the Administrative Procedure Act. Both the TTAB and the Federal Circuit rejected Chestek’s arguments, and Chestek recently filed a petition for writ of certiorari on the question, “Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2).” To date, five organizations (including the District of Columbia Bar Association) have filed amicus briefs in support.
Time and the Supreme Court will tell if the USPTO will be forced to limit or curtail the domicile address requirement—but in the meantime, trademark filers have little choice but to provide accurate and complete domicile address information, and hope that the USPTO’s “masking” technology remains secure.
This article appeared in the June 2024 issue of MarkIt to Market®. To view our past issues, as well as other firm newsletters, please click here.
