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Explore the latest in patent, trademark, and copyright cases on the Merchant & Gould LLP blog. Stay informed with expert insights on intellectual property law updates.

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Last week, the U.S. Court of Appeals for the Federal Circuit issued an opinion in &nbsp;<a href="https://cafc.uscourts.gov/opinions-orders/22-1843.OPINION.2-13-2024_2269139.pdf"><em>In Re: CHESTEK PLLC</em>,&nbsp; No. 2022-1843 (Feb. 13, 2024)</a>, affirming the Trademark Trial and Appeal Board’s refusal of register Chestek’s mark.

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In 2019, the United States Patent and Trademark Office sought to prevent foreign entities from failing to comply with U.S. law when filing trademark applications by creating a rule requiring that foreign entities be represented by U.S. licensed counsel. A portion of the adopted 37 C.F.R. §&nbsp;2.32 final rule required that the application must include “[t]he name and domicile address of each applicant” that needed to be kept current under 37 C.F.R. § 2.189.

In 2020, Chestek applied for the mark “CHESTEK LEGAL”, listing a P.O. Box rather than its actual domicile address. An examiner refused the application on that basis. Chestek refused to provide its actual domicile address and challenged the rule promulgation process as failing to comply with the Administrative Procedures Act. The refusal was finalized, and Chestek appealed to the Trademark Trial and Appeal Board. The Board affirmed the examiner’s refusal and Chestek appealed to the Federal Circuit. Chestek argued lack of compliance with the APA because the proposed rule that underwent the notice-and-comment process did not contain the domicile requirement set forth in the final rule. Chestek also argued that the domicile requirement was arbitrary and capricious because the final rule was not sufficiently explained and created privacy issues.

The Federal Circuit affirmed. Citing 5 U.S.C. § 553(b)(A), the Court noted the exception to the notice-and-comment requirement for “interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice.” The Court explained that the domicile requirement is an interpretative rule because it alters the manner of the application rather than affecting substantive standards. The Court also rejected Chestek’s argument about insufficient explanation, noting the rule is part of a larger regulatory effort to reduce the influx of foreign applications that fail to comply with U.S. law and that the domicile address requirement is necessary to permit the determination of whether representation by U.S. licensed counsel is required. The Court also rejected Chestek’s privacy argument noting that an agency does not need to consider all policy alternatives and that the agency decision was reasonable on the record at the time.

CAFC Affirms TTAB Decision on Domicile Requirement

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