Authored by: Jeremy J. Gustrowsky
A recent decision has clarified that the U.S. Patent and Trademark Office (USPTO) can require all trademark applicants to provide their actual domicile address—not just a mailing address or P.O. box—when applying for a trademark. This rule, which was challenged by Chestek PLLC after their application was refused for listing only a P.O. box, is part of a broader effort by the USPTO to ensure that foreign applicants are represented by U.S.-licensed attorneys and to combat unauthorized practice of law by foreign parties.
The main argument against the rule was that the USPTO did not follow the proper notice-and-comment procedures required for substantive rule changes under the Administrative Procedure Act (APA). However, the court found that the domicile address requirement is a procedural rule, not a substantive one. This means it affects how applicants present information to the USPTO, but does not change the underlying standards for trademark approval. As a result, the USPTO was not required to go through the full notice-and-comment process for this rule.
Chestek also argued that the rule was arbitrary and capricious, claiming the USPTO did not provide enough justification for the change or consider privacy concerns. The court disagreed, noting that the USPTO had explained the need for the rule as part of its efforts to align with international practices and to effectively enforce the requirement for foreign applicants to use U.S. counsel. The court also pointed out that privacy concerns were not raised during the rulemaking process, so the USPTO was not required to address them at that time.
In summary, the decision confirms that the USPTO can require trademark applicants to provide their true domicile address, and that this procedural rule was properly enacted. Applicants should be aware that using a P.O. box or other non-domicile address will likely result in refusal of their trademark application.