United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: CHESTEK PLLC,

Appellant

______________________ 

2022-1843

______________________ 

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board in No. 

88938938.

______________________ 

Decided: February 13, 2024

______________________ 

ANDREW M. GROSSMAN, Baker & Hostetler LLP, Washington, DC, argued for appellant. Also represented by 

RENEE KNUDSEN, KRISTIN ANN SHAPIRO. 

 MARY BETH WALKER, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, argued for appellee Katherine K. Vidal. Also represented by 

CHRISTINA J. HIEBER, FARHEENA YASMEEN RASHEED. 

 DAVID E. BOUNDY, Potomac Law Group PLLC, Newton, 

MA, as amicus curiae, pro se.

______________________ 

Before LOURIE, CHEN, and STOLL, Circuit Judges.

LOURIE, Circuit Judge. 

Case: 22-1843 Document: 55 Page: 1 Filed: 02/13/2024
2 IN RE: CHESTEK PLLC

Chestek PLLC (“Chestek”) appeals from a Trademark 

Trial and Appeal Board (“the Board”) decision affirming 

the examiner’s refusal to register the mark CHESTEK 

LEGAL for failure to comply with the domicile address requirement of 37 C.F.R. §§ 2.32(a)(2) and 2.189. In Re 

Chestek PLLC, No. 88938938, 2022 WL 1000226 (T.T.A.B. 

Mar. 30, 2022) (“Decision”). Chestek challenges the procedural process by which the rules containing the domicile 

address requirement were promulgated. For the following 

reasons, we affirm. 

BACKGROUND

In 2019, the United States Patent and Trademark Office (“the USPTO”) engaged in notice-and-comment rulemaking to require trademark applicants, registrants, or 

parties to a trademark proceeding with domiciles outside 

the United States or its territories to be represented by 

United States licensed counsel (“the U.S. counsel requirement”). See Requirement of U.S. Licensed Attorney for 

Foreign Trademark Applicants and Registrants, 84 Fed. 

Reg. 4393 (Feb. 15, 2019) (to be codified at 37 C.F.R. pts. 2, 

11) (“Proposed Rule”); Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants, 

84 Fed. Reg. 31498 (July 2, 2019) (to be codified at 

37 C.F.R. pts. 2, 7, 11) (“Final Rule”). The USPTO explained that the rule was enacted to combat “the growing 

problem of foreign individuals, entities, and applicants failing to comply with U.S. law.” Proposed Rule at 4396; Final 

Rule at 31500. The USPTO further stated that the proposed changes were “rules of agency practice and procedure, and/or interpretive rules” exempt from the 

requirements of notice-and-comment rulemaking but that 

it had nevertheless “chosen to seek public comment before 

implementing the rule to benefit from the public’s input.” 

Proposed Rule at 4399. 

As part of the final rule adopting the U.S. counsel requirement, the USPTO revised 37 C.F.R. § 2.32 to require 

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IN RE: CHESTEK PLLC 3

all applications to include “[t]he name and domicile address of each applicant” and added 37 C.F.R. § 2.189 to require “[a]n applicant or registrant [to] provide and keep 

current the address of its domicile” (“the domicile address 

requirement”). Final Rule at 31511. In the proposed rule, 

“domicile” was defined to mean “the permanent legal place 

of residence of a natural person,” Proposed Rule at 4402, 

and in the final rule, that definition was expanded to include “the principal place of business of a juristic entity.” 

Final Rule at 31510; 37 C.F.R. § 2.2(o). While the proposed 

rule did not expressly include the domicile address requirement, it provided that the USPTO may require an applicant to provide any information “reasonably necessary to 

the proper determination of whether the applicant . . . is 

subject to the [U.S. counsel] requirement[.]” Proposed Rule

at 4402; Final Rule at 31510; 37 C.F.R. § 2.11(b). Previously, applicants were required to provide a mailing address, which could include a P.O. box, but the USPTO 

explained that, in adopting the U.S. counsel requirement, 

it was following the practice of other countries with similar 

domestic attorney requirements and conditioning it on 

domicile. Proposed Rule at 4396; Final Rule at 31500. 

In May 2020, Chestek, a law firm that represents clients in trademark matters, applied for the mark 

CHESTEK LEGAL and provided only a P.O. box as its 

domicile address. Decision at *1. The examiner refused

Chestek’s application for failure to comply with 37 C.F.R. 

§§ 2.32(a)(2) and 2.189. Id. Chestek declined to change its

address and argued that the rules enforced against it were 

improperly promulgated under the Administrative Procedure Act (“the APA”). Id. The examiner made the refusal 

final, and Chestek appealed to the Board, where Chestek 

conceded its failure to comply with the domicile address requirement but maintained its argument that the rules enforced against it were improperly promulgated. Id. at *2. 

To address Chestek’s procedural challenge, the Board incorporated by reference the USPTO’s denial of an earlier 

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4 IN RE: CHESTEK PLLC

petition for rulemaking submitted by Chestek on behalf of 

a third-party client that made similar arguments regarding the improper promulgation of the domicile address requirement. Id. at *3. The Board then affirmed the 

examiner’s refusal based on Chestek’s failure to comply 

with the domicile address requirement in 37 C.F.R. 

§§ 2.32(a)(2) and 2.189. Id. at *4. Chestek timely appealed. 

We have jurisdiction to consider Chestek’s APA challenge

to a USPTO rule adversely enforced against it. See Abbott 

Lab’ys v. Gardner, 387 U.S. 136, 140 (1967), abrogated on 

other grounds by Califano v. Sanders, 430 U.S. 99 (1977);

see, e.g., Aqua Prod., Inc. v. Matal, 872 F.3d 1290, 1300–01

(Fed. Cir. 2017). We have jurisdiction over appeals from 

the Board under 28 U.S.C. § 1295(a)(4)(B) and 15 U.S.C. 

§ 1071(a).

DISCUSSION

We review agency procedures for compliance with the 

APA de novo and must “hold unlawful and set aside agency 

action, findings, and conclusions found to be . . . arbitrary, 

capricious, an abuse of discretion, or otherwise not in accordance with law . . . [or] without observance of procedure 

required by law.” 5 U.S.C. §§ 706(2)(A), (D); EmeraChem 

Holdings, LLC v. Volkswagen Grp. of Am., Inc., 859 F.3d 

1341, 1345 (Fed. Cir. 2017). 

Chestek argues that the domicile address requirement 

was improperly promulgated for two independent reasons

and that the Board’s decision enforcing the domicile address requirement should therefore be vacated. Chestek 

first argues that the USPTO was required to comply with 

the requirements of notice-and-comment rulemaking under 5 U.S.C. § 553 but failed to do so because the proposed 

rule did not provide notice of the domicile address requirement adopted in the final rule. Second, Chestek argues 

that the domicile address requirement is arbitrary and capricious because the final rule failed to offer a satisfactory 

explanation for the domicile address requirement and

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IN RE: CHESTEK PLLC 5

failed to consider important aspects of the problem it purports to address, such as privacy. 

I 

We first address whether or not the USPTO was required to promulgate the domicile address requirement

through notice-and-comment rulemaking. Under 

35 U.S.C. § 2(b)(2), the USPTO has authority to establish 

regulations to “govern the conduct of proceedings in the Office,” which “shall be made in accordance with section 553 

of title 5.” Section 553, which generally prescribes noticeand-comment rulemaking, provides:

(a) This section applies, according to the provisions 

thereof, except to the extent that there is involved— 

(1) a military or foreign affairs function of 

the United States; or

(2) a matter relating to agency management or personnel or to public property, 

loans, grants, benefits, or contracts.

(b) General notice of proposed rule making shall be 

published in the Federal Register, unless persons 

subject thereto are named and either personally 

served or otherwise have actual notice thereof in 

accordance with law. The notice shall include— 

(1) a statement of the time, place, and nature of public rule making proceedings;

(2) reference to the legal authority under 

which the rule is proposed; [and] 

(3) either the terms or substance of the proposed rule or a description of the subjects 

and issues involved; . . . 

Except when notice or hearing is required by statute, this subsection does not apply— 

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6 IN RE: CHESTEK PLLC

(A) to interpretative rules, general statements of policy, or rules of agency organization, procedure, or practice; or

(B) when the agency for good cause finds 

(and incorporates the finding and a brief 

statement of reasons therefor in the rules 

issued) that notice and public procedure 

thereon are impracticable, unnecessary, or 

contrary to the public interest. 

5 U.S.C. § 553 (emphasis added). 

As provided above, § 553(b)(A) does not require the formalities of notice-and-comment for “interpretative rules, 

general statements of policy, or rules of agency organization, procedure, or practice.” Id. In the context of distinguishing between a “substantive” rule that requires noticeand-comment rulemaking and an “interpretive” rule that 

does not, this court has described a “substantive” rule as 

one that “effects a change in existing law or policy which 

affects individual rights and obligations.” Animal Legal 

Def. Fund v. Quigg, 932 F.2d 920, 927 (Fed. Cir. 1991) 

(cleaned up); see also Cooper Techs. Co. v. Dudas, 536 F.3d 

1330, 1336–37 (Fed. Cir. 2008) (holding that the USPTO’s 

interpretation of “original application” was not subject to 

the formal notice-and-comment requirements of § 553 because it “merely clarifie[d]” existing law). This court has 

not, however, directly addressed when a rule is procedural 

and excepted from notice-and-comment rulemaking as a 

“rule[] of agency organization, procedure, or practice.” 

Chestek argues that the domicile address requirement 

is a substantive rule and that the USPTO was therefore 

required to undertake notice-and-comment rulemaking to 

adopt it. In the alternative, Chestek argues that the 

USPTO is required to undertake notice-and-comment rulemaking for procedural rules. Both arguments are unpersuasive. 

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IN RE: CHESTEK PLLC 7

Chestek first argues that the domicile address requirement is a substantive rule because it imposes a new requirement on applicants to obtain a trademark—providing 

a domicile address rather than a mailing address—and 

therefore substantively alters the rights or interests of applicants. We disagree. 

The parties each cite several cases from the United 

States Court of Appeals for the D.C. Circuit addressing the 

boundaries of substantive and procedural rules to support 

their respective positions. The most instructive case here

is JEM Broadcasting Co. v. F.C.C., 22 F.3d 320 (D.C. Cir. 

1994), which states that the “critical feature of the procedural exception [of § 553(b)(A)] is that it covers agency actions that do not themselves alter the rights or interests of 

parties, although it may alter the manner in which the parties present themselves or their viewpoints to the agency.” 

Id. at 326 (internal quotation marks omitted) (citation 

omitted). The court recognized that nearly any procedural 

requirement that impacts outcomes could then be described as substantive, “but to pursue that line of analysis 

results in the obliteration of the distinction that Congress 

demanded.” Id.; see also Am. Fed’n of Lab. & Cong. of Indus. Organizations v. Nat’l Lab. Rels. Bd., 57 F.4th 1023, 

1034 (D.C. Cir. 2023) (describing “rules as procedural if 

they are primarily directed toward improving the efficient 

and effective operations of an agency.”) (internal quotation 

marks omitted) (citation omitted). 

The key distinction here is similarly not whether compliance with the domicile address requirement affects a 

party’s ability to obtain a trademark, but whether the requirement affects the substantive trademark standards by

which the Office examines a party’s application. See JEM 

Broadcasting, 22 F.3d at 327 (“The critical fact here, however, is that the [challenged] rules did not change the substantive standards by which the FCC evaluates license 

applications, e.g., financial qualifications, proposed programming, and transmitter location. This fact is fatal to 

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8 IN RE: CHESTEK PLLC

JEM’s claim.”). Here, the new rule requires additional information about applicants, i.e., their domicile address. 

Requiring different or additional information from applicants regarding their addresses merely “alter[s] the manner in which the [applicants] present themselves . . . to the 

agency.” Id. at 326 (emphasis added). It does not alter the 

substantive standards by which the USPTO evaluates 

trademark applications, e.g., a mark’s use in commerce or 

distinctiveness. The USPTO’s requirement for applicants 

to provide a domicile address under 37 C.F.R. §§ 2.32(a)(2) 

and 2.189 is therefore a procedural rule that is excepted 

from notice-and-comment rulemaking. 

Chestek alternatively argues that, even if the rule is 

procedural, 35 U.S.C. § 2 of the Patent Act expressly requires the USPTO to undertake notice-and-comment rulemaking because a cross-reference to § 553 of the APA is 

Congress’s standard way of mandating notice-and-comment rulemaking and overriding § 553’s carveouts. See 35 

U.S.C. § 2(b)(2) (“regulations . . . shall be made in accordance with section 553 of title 5”). To support that argument, Chestek points to the Food Stamp Act which 

similarly authorizes an agency to issue regulations “in accordance with the procedures set forth in section 553 of title 5,” 7 U.S.C. § 2013(c), despite § 553(a)’s explicit 

exemption for “matter relating to . . . grants [and] benefits,” 5 U.S.C. § 553(a)(2). 

As an initial matter, the relevant language of the Food 

Stamp Act and the Patent Act is not identical. The Food 

Stamp Act explicitly invokes “the procedures set forth in 

section 553,” 7 U.S.C. § 2013(c) (emphasis added) whereas 

35 U.S.C. § 2 does not. Rather, 35 U.S.C. § 2 generally authorizes the USPTO to promulgate regulations “in accordance with section 553 of title 5.” 35 U.S.C. § 2(b)(2)(B). 

Additionally, Chestek’s arguments relating to the Food 

Stamp Act only address the subject matter exemptions under § 553(a) and fail to address the distinction between 

these subject matter exemptions and the procedural 

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IN RE: CHESTEK PLLC 9

exceptions under § 553(b). In fact, several of the cases 

Chestek cited recognize that the procedural and good-cause 

exceptions to notice-and-comment rulemaking in 

§§ 553(b)(A) and (B) still apply to the Food Stamp Act despite the cross-reference to § 553. See generally Levesque 

v. Block, 723 F.2d 175, 179–85 (1st Cir. 1983) (recognizing 

that the interpretive rule and good-cause exceptions would 

still apply to rulemaking under the Food Stamp Act); 

Klaips v. Bergland, 715 F.2d 477, 482–83 (10th Cir. 1983)

(discussing the 5 U.S.C. § 553(b) exceptions to notice-andcomment rulemaking in the context of the Food Stamp 

Act). Chestek has therefore offered no support for its position that the cross-reference to § 553 in 35 U.S.C. § 2(b) displaces the procedural exceptions to notice-and-comment 

rulemaking contained within § 553(b). That is particularly 

true when displacing that exception for procedural rules 

would be inconsistent with our holdings regarding interpretive rules under the same provision of § 553(b). See 

Cooper Techs., 536 F.3d at 1336–37 (holding that 5 U.S.C. 

§ 553, and thus 35 U.S.C. § 2(b)(2)(B), does not require notice-and-comment rulemaking for interpretative rules);

Animal Legal Def. Fund, 932 F.2d at 931. The procedural 

exception to notice-and-comment rulemaking under 

§ 553(b) therefore applies to the domicile address requirement.

Having found the challenged rules within the procedural exception to notice-and-comment rulemaking, we 

need not address Chestek’s argument that the proposed 

rule failed to provide sufficient notice of the domicile address requirement. 

II

Next, Chestek argues that the USPTO’s promulgation 

of the domicile address requirement was arbitrary and capricious. An agency rule is arbitrary and capricious if “the 

agency has relied on factors which Congress has not intended it to consider, entirely failed to consider an 

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10 IN RE: CHESTEK PLLC

important aspect of the problem, offered an explanation for 

its decision that runs counter to the evidence before the 

agency, or is so implausible that it could not be ascribed to 

a difference in view or the product of agency expertise.” 

Motor Vehicle Mfrs. Ass’n of U.S., Inc. v. State Farm Mut. 

Auto. Ins. Co., 463 U.S. 29, 43 (1983). Courts must “uphold

a decision of less than ideal clarity if the agency’s path may 

reasonably be discerned.” Id. (quoting Bowman Transp., 

Inc. v. Arkansas-Best Freight Sys., Inc., 419 U.S. 281, 286 

(1974)). But courts “may not supply a reasoned basis for 

the agency’s action that the agency itself has not given.” 

SEC v. Chenery Corp., 332 U.S. 194, 196 (1947).

Chestek argues that the final rule is arbitrary and capricious because it offers an insufficient justification for the 

domicile address requirement. It argues that the USPTO’s 

explanations for the changes from the proposed rule to the 

final rule were its only justification for the domicile address 

requirement and that they were insufficient because the 

USPTO stated only that “[f]or consistency with this [U.S. 

counsel] requirement, the USPTO has clarified that the address required in §§ 2.22(a)(1) and 2.32(a)(2) is the domicile 

address,” and that, “to authorize the domicile address, the 

USPTO codifies a new regulatory section at 37 CFR 2.189.” 

See Final Rule at 31500.

Chestek’s argument that the USPTO offered an insufficient justification for the domicile address requirement is 

incorrect. The USPTO adopted the domicile address requirement as part of a larger regulatory scheme to require 

foreign trademark applicants, registrants, or parties to a 

trademark proceeding to be represented by U.S. counsel. 

In the proposed rule, the USPTO explained that the U.S. 

counsel requirement was needed because of the influx of 

unauthorized practice of law by foreign parties improperly 

representing trademark applicants and purportedly pro se

foreign applicants failing to comply with the requirements 

of the USPTO. Proposed Rule at 4394. It went on to explain the inadequacies of the current mechanisms and 

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IN RE: CHESTEK PLLC 11

sanctions and provided statistics showing, among other 

things, the influx in pro se foreign applicants. Id. at 4395–

96. The USPTO then explained that a majority of other 

countries with similar domestic counsel requirements “condition the requirement on domicile” and that the USPTO 

“intends to follow this practice.” Id. at 4396. To condition 

the U.S. counsel requirement on domicile, the USPTO 

would necessarily need to know applicants’ domicile, which 

it defined in the final rule as “the permanent legal place of 

residence of a natural person or the principal place of business of a juristic entity.” Final Rule at 31510. Because the 

USPTO would need to know an applicant’s domicile address to determine if the U.S. counsel requirement applied, 

it reasonably required all applicants to provide their domicile address. The USPTO’s justification for all applicants

to provide a domicile address is therefore at least reasonably discernable when considered in the full context of the 

U.S. attorney requirement and the decision to condition 

that requirement on domicile. 

That the final rule represents a change in longstanding 

USPTO policy does not alter our conclusion. The USPTO 

“display[ed] awareness that it [was] changing position” and 

“show[ed] that there [were] good reasons for the new policy.” Encino Motorcars, LLC v. Navarro, 579 U.S. 211, 221 

(2016) (quoting FCC v. Fox Television Stations, Inc., 

556 U.S. 502, 515 (2009)). As Chestek acknowledges, 

37 C.F.R. § 2.32 has long required an applicant to provide 

an address. The USPTO understood that its final rule 

would enact a change in policy. Final Rule at 31500 (explaining that the domicile address requirement would revise “the address required in §§ 2.22(a)(1) and 2.32(a)(2) [to 

be] the domicile address” and acknowledging that the final 

rule would “authorize the USPTO to require an applicant 

or registrant to provide and maintain a current domicile 

address.”). And, as discussed above, this is not a situation 

where an agency “gave almost no reasons at all” and offered 

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12 IN RE: CHESTEK PLLC

only “conclusory statements” to explain its new policy. Encino Motorcars, 579 U.S. at 224.

Additionally, the USPTO’s statements that the revisions from the proposed rule to the final rule were “[f]or 

consistency” were not offered as justification for the domicile address requirement, as suggested by Chestek. Those 

statements were an explanation for the changes from the 

proposed rule to the final rule. See Final Rule at 31500. 

Those statements were adequate to explain its shift in position from the proposed rule to the final rule because, contrary to Chestek’s position, the USPTO did not drastically

shift that position. In the proposed rule, the USPTO indicated that it would follow other countries’ practices and 

condition the U.S. counsel requirement on domicile. Proposed Rule at 4396. It then defined domicile under 

37 C.F.R. § 2.2(o) to include “the permanent legal place of 

residence of a natural person.” Id. at 4402. The USPTO 

also included in the proposed rule revisions to 37 C.F.R.

§ 2.32(a) to require applicants to provide “[t]he address of 

the applicant” and to 37 C.F.R. § 2.11(b) to state that it 

could request any information necessary from applicants to 

determine if the U.S. counsel requirement applied. Id. at 

4402–03. The information necessary to determine the applicability of the U.S. counsel requirement would logically 

include information verifying the applicants domicile address. Accordingly, the proposed rule clearly indicated that 

the USPTO may request that information from applicants

and that it would require applicants to provide an address. 

The final rule then clarified that the required address was

the domicile address and that all applicants must, rather 

than may be required to, provide it, see Final Rule at 

31500, 31511, which was not a drastic shift in policy from 

the proposed rule. 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. 

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IN RE: CHESTEK PLLC 13

Finally, Chestek argues that the domicile address requirement was arbitrary and capricious because the final 

rule failed to consider privacy and other concerns introduced by the requirement, such as its impact on victims of 

domestic violence or on homeless individuals. However, an 

agency is not required “to consider all policy alternatives in 

reaching decision.” State Farm, 463 U.S. at 51. On appeal, 

courts must “judge the reasonableness of an agency’s decision on the basis of the record before the agency at the time 

it made its decision.” Rural Cellular Ass’n v. F.C.C., 

588 F.3d 1095, 1107 (D.C. Cir. 2009). That is particularly 

true where, as here, the policy concerns Chestek raises now 

were not raised before the agency. Indeed, Chestek does 

not contend that those concerns were before the agency at 

the time it promulgated the final rule. In fact, the only 

concerns before the USPTO regarding the domicile address 

requirement were raised in comments relating to foreign 

applicants potentially filing fraudulent addresses, which 

the USPTO considered and addressed. Final Rule at 

31505. The USPTO did not receive comments from parties 

expressing the privacy and other concerns raised by 

Chestek in this case. 

Separately, that situation is unlike the situation in 

State Farm, where the agency regulating vehicle safety 

standards failed to consider the impact of two different 

styles of seatbelts on seatbelt usage, because there, unlike 

here, the record contained information on “precisely the 

type of issue” the agency was expected to “bring its expertise to bear.” See 463 U.S. at 53–54. We therefore find that 

the USPTO did not act arbitrarily or capriciously by failing 

to consider an important aspect of the problem based on 

the record before it. See id. at 51 (“[R]ulemaking cannot be 

found wanting simply because the agency failed to include 

every alternative . . .”) (internal quotation marks omitted) 

(citation omitted). 

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14 IN RE: CHESTEK PLLC

CONCLUSION

Because we conclude the USPTO properly promulgated 

the domicile address requirement and Chestek failed to 

comply with this requirement, we affirm the Board’s refusal to register Chestek’s mark. We have considered 

Chestek’s remaining arguments and find them unpersuasive.

AFFIRMED

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