Trademarks

In re Chestek: When a Trademark Refusal Turns on Administrative Law, Not Trademark Law

The Federal Circuit affirmed a refusal to register CHESTEK LEGAL because the applicant used a P.O. box rather than a domicile address — and in doing so treated the USPTO's domicile rule as a procedural rule exempt from notice-and-comment.

April 25, 2026
A trademark application form on a desk beside a pen
The application listed a post office box instead of a street domicile address, and the refusal that followed reached the Federal Circuit. Shutterstock
Educational content, not legal advice. This article explains general legal concepts. It does not create an attorney–client relationship. For your specific situation, consult a licensed attorney.

In re Chestek PLLC, 92 F.4th 1105 (Fed. Cir. 2024), No. 22-1843, decided February 13, 2024, is a registration case in which trademark doctrine plays almost no part. The applicant, a law firm, sought to register CHESTEK LEGAL and was refused not because the mark failed to identify a source, was confusingly similar, or ran afoul of any Lanham Act §2 bar, but because the application listed a post office box where the United States Patent and Trademark Office demanded a “domicile address.” The Trademark Trial and Appeal Board affirmed the examiner’s refusal, and a Federal Circuit panel of Judges Lourie, Chen, and Stoll — Judge Lourie writing — affirmed the Board. The Supreme Court denied certiorari on October 7, 2024 (Chestek PLLC v. Vidal, No. 23-1217). The decision is a reminder that prosecution outcomes increasingly turn on administrative-law questions about how the agency made its rules, not on the registrability of the mark itself.

At a glance

  • Case: In re Chestek PLLC, 92 F.4th 1105 (Fed. Cir. 2024), No. 22-1843
  • Decided: February 13, 2024; panel of Lourie, Chen, and Stoll, opinion by Judge Lourie
  • Mark: CHESTEK LEGAL (legal services), refused for failure to comply with the domicile address requirement of 37 C.F.R. §§ 2.32(a)(2) and 2.189
  • Holdings: (1) The domicile address requirement is a procedural rule exempt from notice-and-comment rulemaking under 5 U.S.C. § 553(b)(A); (2) the requirement is not arbitrary and capricious for want of a reasoned explanation
  • Status: Affirmed; certiorari denied October 7, 2024 (No. 23-1217)

How a P.O. box defeats an application

The domicile requirement is a byproduct of the USPTO’s 2019 U.S.-counsel rule. To curb a wave of fraudulent and noncompliant foreign filings, the agency began requiring that applicants, registrants, and parties domiciled outside the United States be represented by a U.S.-licensed attorney. Enforcing that mandate requires knowing where an applicant is domiciled, so the same rulemaking package — and its implementing regulations, 37 C.F.R. §§ 2.32(a)(2) and 2.189 — directs every applicant to provide a “domicile address,” defined as the permanent legal residence of an individual or the principal place of business of a juristic entity. A mailing address may differ from a domicile; a post office box, the agency has determined, is categorically not a domicile.

Chestek PLLC, a domestic law firm, listed only a P.O. box. The examining attorney refused registration for noncompliance, the Board affirmed, and Chestek appealed. Critically, Chestek did not argue that requiring applicants to disclose a domicile was beyond the agency’s statutory authority. Its attack was procedural and substantive in the administrative-law sense: the rule was promulgated without adequate notice-and-comment, and it was arbitrary and capricious because the agency never explained why it needed the domicile of domestic applicants or weighed the privacy cost of forcing sole practitioners and home-based businesses to publish a home address.

The procedural-rule exemption swallows the notice problem

Chestek’s first argument was that the domicile requirement was not a “logical outgrowth” of the 2019 notice of proposed rulemaking, which had foregrounded the U.S.-counsel mandate rather than a universal domicile-disclosure obligation. Ordinarily, a final rule that strays too far from what the agency proposed fails for inadequate notice, because affected parties never had a fair chance to comment on what the agency actually adopted.

The Federal Circuit never reached the logical-outgrowth question, because it held that the domicile requirement did not require notice-and-comment in the first place. Under 5 U.S.C. § 553(b)(A), “rules of agency organization, procedure, or practice” are exempt from the Administrative Procedure Act’s notice-and-comment machinery. The court characterized the domicile requirement as exactly that kind of procedural rule: it governs the manner in which an applicant must present information to the office, not the substantive standards by which registrability is judged. A rule “addressed to” how parties interact with the agency, the panel reasoned, does not “alter the rights or interests of parties” in the substantive sense that triggers § 553. Because the requirement was procedural, any defect in the notice — including the logical-outgrowth complaint — was beside the point. The agency could have adopted it with no public comment at all.

This is the analytical heart of the opinion, and it is doing heavy lifting. The procedural-rule exemption is notoriously slippery; courts have struggled for decades to distinguish “procedural” rules from “substantive” ones, particularly where a so-called procedural rule has real-world consequences for the regulated party. Here the consequence is stark: get the address field wrong and your mark does not register. Yet the panel located the rule on the procedural side of the line by focusing on what the rule regulates — the form of the submission — rather than on how much it hurts when you fail to comply.

”Not arbitrary and capricious” by way of a low bar

Chestek’s fallback was the APA’s arbitrary-and-capricious standard, which polices the substance of agency action even when notice-and-comment is excused. Chestek argued the agency offered no reasoned justification for demanding a domicile from every applicant, including domestic ones for whom the U.S.-counsel rationale is irrelevant, and that it ignored the obvious privacy intrusion.

The court rejected the challenge. It held that the USPTO’s “decision to require the address provided by all applicants to be a domicile address was therefore not arbitrary or capricious for failure to provide a reasoned justification.” The agency’s stated purpose — enabling enforcement of the U.S.-counsel requirement by reliably identifying who is and is not domiciled abroad — was a sufficient, rational basis, and a uniform rule applied to everyone is an unsurprising way to administer a domicile-based distinction. As for privacy, the court was unmoved: an applicant concerned about disclosing a home address has avenues short of invalidating the rule, and the agency was not obligated to anticipate and refute every downstream concern to clear the deferential arbitrary-and-capricious threshold.

The two holdings reinforce each other. Once the rule is procedural, the agency owes little process; once the agency’s enforcement rationale is deemed rational, the thin record is enough. The cumulative effect is to insulate this category of prosecution requirement from meaningful APA attack.

Open questions

The opinion leaves the boundary of the procedural-rule exemption unresolved in a way that matters well beyond domicile. If a requirement that can sink an application counts as merely procedural because it governs the form of a filing, what registration requirements would demand notice-and-comment? The court’s line — substance versus presentation — is administrable in easy cases but porous in the ones that will be litigated. A future applicant denied registration over some other formality could argue that Chestek proves too much, and the agency will cite Chestek for the opposite proposition.

Also unresolved is the privacy dimension the court declined to engage. The domicile rule pushes sole proprietors and home-based applicants to put a residential address into a public file, and the available work-arounds (such as petitioning to redact or shielding a domicile while listing a separate correspondence address) are imperfect and not well known to pro se filers. The Supreme Court’s denial of certiorari ends the immediate challenge but does not settle whether the agency’s data-collection practices are adequately justified as the volume of home-based filers grows.

Implications

  • A refusal can be purely formal. Registrability is necessary but not sufficient. An application that satisfies every §2 standard can still be refused for a non-substantive filing defect, and that refusal will be affirmed.
  • Audit the domicile field before filing. A P.O. box, a mail-drop, or a registered-agent address is not a domicile. Confirm the applicant’s permanent legal residence or principal place of business and respond promptly to any domicile inquiry from the examiner.
  • Counsel home-based clients on disclosure. Sole practitioners and home-office businesses should be advised, before filing, that a residential domicile may enter the public record, and walked through the available masking and redaction options.
  • APA challenges to prosecution rules face steep odds. After Chestek, framing a USPTO filing requirement as procedural is the agency’s strong default, and arbitrary-and-capricious review of such rules is highly deferential. Plan around the rule rather than betting on invalidating it.

Frequently asked questions

Was CHESTEK LEGAL refused because something was wrong with the mark? No. The mark’s registrability was not the issue. The application was refused solely because it listed a post office box instead of a domicile address, in violation of 37 C.F.R. §§ 2.32(a)(2) and 2.189.

Why does the USPTO want a domicile rather than just a mailing address? Domicile determines whether an applicant must be represented by U.S. counsel under the agency’s 2019 rule aimed at fraudulent foreign filings. The agency needs a reliable domicile to enforce that requirement, and it applied the demand uniformly to all applicants.

Can an applicant keep a home address out of the public record? The court did not bless full secrecy, but applicants worried about exposure can list a separate correspondence or mailing address and, in appropriate cases, petition the office to hide or redact the domicile. These options are limited and should be addressed before filing.

Authorities and sources