United States Patent and Trademark Office (USPTO)

 

U.S. Application Serial No. 86834497   U.S. Registration No. 5020986       Mark:  FF
Correspondence Address:         Lawrence E. Apolzon        FROSS ZELNICK LEHRMAN & ZISSU, P.C.        151 W 42nd Street, 17th Floor        NEW YORK NY 10036
Owner:  David Grohl
Reference/Docket No. FOOF 1506924   Correspondence Email Address:         Apolzon-PR@fzlz.com

 

 

PETITION TO DIRECTOR GRANTED

 

 

Issue date:  October 11, 2022

 

 

David Grohl (petitioner) has petitioned the Director of the United States Patent and Trademark Office (USPTO) to waive the requirement in Trademark Rule 2.189 that a registrant must provide and keep current the address of its domicile. The Director has authority to review this request under 37 C.F.R. §§2.146(a)(5), 2.148 and has delegated this matter to the Commissioner for Trademarks and the staff of the Office of the Deputy Commissioner for Trademark Examination Policy. 35 U.S.C. §3(a)-(b); 37 C.F.R. §2.146(h).  The petition is granted.

 

FACTS

 

On November 30, 2015, petitioner filed an application for registration of the above-identified mark on the Principal Register. On August 15, 2022, petitioner submitted a Trademark Act Section 8 declaration of use or excusable nonuse.

 

On August 16, 2022, petitioner filed this petition requesting that the requirement to submit petitioner’s personal street address be waived and that petitioner be allowed to continue using c/o address for his/her attorney of record due to safety concerns.  (Petition.)/ Petitioner provided the state and country of his domicile in his Petition, which will remain hidden from public view. Petitioner’s attorney of record supplemented the petition on August 16, 2022, with a signed declaration under Trademark Rule 2.20 verifying that the domicile information submitted by petitioner is accurate.

 

DISCUSSION

 

Trademark Act Section 1(a)(2) requires that every trademark application include specification of the applicant’s domicile and citizenship. 15 U.S.C. §1051(a)(2). Trademark Rule 2.189 further requires that an applicant or registrant must provide and keep current the address of its domicile, defined in Rule 2.2(o) as the permanent legal place of residence of a natural person or the principal place of business of a juristic entity. 37 C.F.R. §§2.2(o), 2.189.

 

The Director may waive Rule 2.189 only “in an extraordinary situation, when justice requires and no other party is injured.” 37 C.F.R. §§2.146(a)(5), 2.148; see TMEP §1708. To waive this rule, the Director must determine that all three conditions are satisfied. See TMEP §1708. The Director may not waive a statutory requirement. Id.

 

In this case, the Director finds that a waiver of Trademark Rule 2.189’s requirement to provide the address of petitioner’s domicile is appropriate. The evidence of personal safety concerns submitted with the petition establish an extraordinary situation, in which the Director can conclude that no other party will be injured and justice requires a waiver of this rule. See TMEP §1708. Under the circumstances presented, petitioner has complied with the statutory requirement to specify his domicile by providing the state and country in which he is domiciled and the Director will waive Rule 2.189’s requirement to provide the street address of his domicile.

 

Accordingly, the Director will permit petitioner to continue using c/o address for petitioner’s attorney as the mailing address of record and will accept the state and country information provided in the Petition as petitioner’s domicile address.  See 37 C.F.R. §§2.146(a)(5), 2.148.   

 

DECISION

 

The petition is granted.  The registration file will be returned to Post Registration to continue prosecution of the pending Section 8 declaration of use or excusable nonuse.

 

 /Deborah  Blocker/

Paralegal Specialist

Office of the Deputy Commissioner

for Trademark Examination Policy

571-272-9566

Deborah.Blocker@uspto.gov