Does the PTO Have the Power to Ask Where You Sleep at Night? Pamela Chestek, the Patent Act, and the APA Say No

Authors

Jessica Manzon, Benjamin N. Cardozo School of Law

Abstract

Imagine this scenario: You apply for a trademark, following the longstanding practice of listing your business’s PO Box on the application. Days later, you receive a notice from the U.S. Patent and Trademark Office (PTO): Your application was rejected for failure to disclose your domicile address—a requirement imposed under the 2019 U.S. Counsel Rule. Having previously suffered harm from making your home address public, you are understandably reluctant to expose it again for something as routine as a trademark application. You stand firm in withholding your domicile address, citing privacy concerns. As a result, your application remains denied, and when you appeal to the Trademark Trial and Appeal Board, your claim is dismissed for noncompliance with the statutory requirements. If this story sounds familiar, it is because it reflects the real experience of Pamela Chestek, whose trademark application was denied for failure to disclose her domicile address. In effect, the 2019 statutory scheme altered the manner by which a trademark examiner, and then the Board, evaluated Chestek’s application, adversely affecting her rights under the Patent Act without considering or incorporating public comments. This Note argues that the PTO wrongly rejected her application, since the underlying statutory requirement—domicile address disclosure—was improperly promulgated, having failed to comply with the notice-and-comment formalities required by the Administrative Procedure Act (APA). This Note examines the Federal Circuit’s pivotal role in enabling the PTO to exceed its statutory rulemaking authority under the Patent Act, as illustrated by In re Chestek PLLC. It argues that this overreach stems from the court’s conflation of “procedural” as used in the Patent Act’s grant of rulemaking power, with “procedural” as used in the APA’s exemption from notice-and-comment requirements. This misinterpretation permits the PTO to promulgate rules, like the one in Chestek, that materially affect trademark applicants’ rights without adhering to APA-mandated procedures. Finally, this Note considers the broader implications of the Federal Circuit’s deference to PTO rulemaking. It warns that allowing agencies to sidestep the APA threatens the integrity of the administrative law regime as a whole. If one agency can disregard APA procedures with impunity, it sets a troubling precedent for others to follow.

Disciplines

Administrative Law | Intellectual Property Law | Law

Recommended Citation

Jessica Manzon, Does the PTO Have the Power to Ask Where You Sleep at Night? Pamela Chestek, the Patent Act, and the APA Say No, 47 Cardozo L. Rev. 383 (2025).
Available at: https://larc.cardozo.yu.edu/clr/vol47/iss1/9