Case: 22-1843    Document: 55   Page: 1    Filed: 02/13/2024




   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, Wash-
 ington, 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, ar-
 gued 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: 2    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 re-
 quirement of 

(a)(2) and 2.189. In Re
 Chestek PLLC, No. 88938938, 

 (T.T.A.B.
 Mar. 30, 2022) (“Decision”). Chestek challenges the proce-
 dural 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 Of-
 fice (“the USPTO”) engaged in notice-and-comment rule-
 making 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 require-
 ment”). See Requirement of U.S. Licensed Attorney for
 Foreign Trademark Applicants and Registrants, 

 (Feb. 15, 2019) (to be codified at 37 C.F.R. pts. 2,
 11) (“Proposed Rule”); Requirement of U.S. Licensed Attor-
 ney for Foreign Trademark Applicants and Registrants,
 

 (July 2, 2019) (to be codified at
 37 C.F.R. pts. 2, 7, 11) (“Final Rule”). The USPTO ex-
 plained that the rule was enacted to combat “the growing
 problem of foreign individuals, entities, and applicants fail-
 ing to comply with U.S. law.” Proposed Rule at 4396; Final
 Rule at 31500. The USPTO further stated that the pro-
 posed changes were “rules of agency practice and proce-
 dure, 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 re-
 quirement, the USPTO revised 

 to require
Case: 22-1843    Document: 55      Page: 3    Filed: 02/13/2024




 IN RE: CHESTEK PLLC                                        3



 all applications to include “[t]he name and domicile ad-
 dress of each applicant” and added 

 to re-
 quire “[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 in-
 clude “the principal place of business of a juristic entity.”
 Final Rule at 31510; 

(o). While the proposed
 rule did not expressly include the domicile address require-
 ment, it provided that the USPTO may require an appli-
 cant 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; 

(b). Previ-
 ously, applicants were required to provide a mailing ad-
 dress, 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 cli-
 ents 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 

(a)(2) and 2.189. 

 Chestek declined to change its
 address and argued that the rules enforced against it were
 improperly promulgated under the Administrative Proce-
 dure Act (“the APA”). 

 The examiner made the refusal
 final, and Chestek appealed to the Board, where Chestek
 conceded its failure to comply with the domicile address re-
 quirement but maintained its argument that the rules en-
 forced against it were improperly promulgated. 

.
 To address Chestek’s procedural challenge, the Board in-
 corporated by reference the USPTO’s denial of an earlier
Case: 22-1843     Document: 55     Page: 4    Filed: 02/13/2024




 4                                        IN RE: CHESTEK PLLC




 petition for rulemaking submitted by Chestek on behalf of
 a third-party client that made similar arguments regard-
 ing the improper promulgation of the domicile address re-
 quirement. 

. The Board then affirmed the
 examiner’s refusal based on Chestek’s failure to comply
 with the domicile address requirement in 

(a)(2) and 2.189. 

. 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, 

 (1967), abrogated on
 other grounds by Califano v. Sanders, 

 (1977);
 see, e.g., Aqua Prod., Inc. v. Matal, 

, 1300–01
 (Fed. Cir. 2017). We have jurisdiction over appeals from
 the Board under 

(a)(4)(B) and 

(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 ac-
 cordance with law . . . [or] without observance of procedure
 required by law.” 

(2)(A), (D); EmeraChem
 Holdings, LLC v. Volkswagen Grp. of Am., Inc., 

 (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 ad-
 dress requirement should therefore be vacated. Chestek
 first argues that the USPTO was required to comply with
 the requirements of notice-and-comment rulemaking un-
 der 

 but failed to do so because the proposed
 rule did not provide notice of the domicile address require-
 ment adopted in the final rule. Second, Chestek argues
 that the domicile address requirement is arbitrary and ca-
 pricious because the final rule failed to offer a satisfactory
 explanation for the domicile address requirement and
Case: 22-1843    Document: 55     Page: 5    Filed: 02/13/2024




 IN RE: CHESTEK PLLC                                        5



 failed to consider important aspects of the problem it pur-
 ports to address, such as privacy.
                              I
      We first address whether or not the USPTO was re-
 quired to promulgate the domicile address requirement
 through notice-and-comment rulemaking.                Under
 

(b)(2), the USPTO has authority to establish
 regulations to “govern the conduct of proceedings in the Of-
 fice,” which “shall be made in accordance with section 553
 of title 5.” Section 553, which generally prescribes notice-
 and-comment rulemaking, provides:
    (a) This section applies, according to the provisions
    thereof, except to the extent that there is in-
    volved—
        (1) a military or foreign affairs function of
        the United States; or
        (2) a matter relating to agency manage-
        ment 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 na-
        ture 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 pro-
        posed rule or a description of the subjects
        and issues involved; . . .
    Except when notice or hearing is required by stat-
    ute, this subsection does not apply—
Case: 22-1843    Document: 55     Page: 6    Filed: 02/13/2024




 6                                       IN RE: CHESTEK PLLC




        (A) to interpretative rules, general state-
        ments of policy, or rules of agency organiza-
        tion, 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.
 

 (emphasis added).
     As provided above, § 553(b)(A) does not require the for-
 malities of notice-and-comment for “interpretative rules,
 general statements of policy, or rules of agency organiza-
 tion, procedure, or practice.” Id. In the context of distin-
 guishing between a “substantive” rule that requires notice-
 and-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, 

, 927 (Fed. Cir. 1991)
 (cleaned up); see also Cooper Techs. Co. v. Dudas, 

, 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 be-
 cause 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 rule-
 making for procedural rules. Both arguments are unper-
 suasive.
Case: 22-1843    Document: 55      Page: 7    Filed: 02/13/2024




 IN RE: CHESTEK PLLC                                        7



     Chestek first argues that the domicile address require-
 ment is a substantive rule because it imposes a new re-
 quirement on applicants to obtain a trademark—providing
 a domicile address rather than a mailing address—and
 therefore substantively alters the rights or interests of ap-
 plicants. 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., 

 (D.C. Cir.
 1994), which states that the “critical feature of the proce-
 dural exception [of § 553(b)(A)] is that it covers agency ac-
 tions that do not themselves alter the rights or interests of
 parties, although it may alter the manner in which the par-
 ties 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 de-
 scribed 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 In-
 dus. Organizations v. Nat’l Lab. Rels. Bd., 

 (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 com-
 pliance with the domicile address requirement affects a
 party’s ability to obtain a trademark, but whether the re-
 quirement affects the substantive trademark standards by
 which the Office examines a party’s application. See JEM
 Broadcasting, 

 (“The critical fact here, how-
 ever, is that the [challenged] rules did not change the sub-
 stantive standards by which the FCC evaluates license
 applications, e.g., financial qualifications, proposed pro-
 gramming, and transmitter location. This fact is fatal to
Case: 22-1843    Document: 55      Page: 8    Filed: 02/13/2024




 8                                        IN RE: CHESTEK PLLC




 JEM’s claim.”). Here, the new rule requires additional in-
 formation about applicants, i.e., their domicile address.
 Requiring different or additional information from appli-
 cants regarding their addresses merely “alter[s] the man-
 ner in which the [applicants] present themselves . . . to the
 agency.” 

 (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 

(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, 

 of the Patent Act expressly re-
 quires the USPTO to undertake notice-and-comment rule-
 making because a cross-reference to § 553 of the APA is
 Congress’s standard way of mandating notice-and-com-
 ment rulemaking and overriding § 553’s carveouts. See 

(b)(2) (“regulations . . . shall be made in accord-
 ance with section 553 of title 5”). To support that argu-
 ment, Chestek points to the Food Stamp Act which
 similarly authorizes an agency to issue regulations “in ac-
 cordance with the procedures set forth in section 553 of ti-
 tle 5,” 

(c), despite § 553(a)’s explicit
 exemption for “matter relating to . . . grants [and] bene-
 fits,” 

(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,” 

(c) (emphasis added) whereas
 

 does not. Rather, 

 generally au-
 thorizes the USPTO to promulgate regulations “in accord-
 ance with section 553 of title 5.” 

(b)(2)(B).
 Additionally, Chestek’s arguments relating to the Food
 Stamp Act only address the subject matter exemptions un-
 der § 553(a) and fail to address the distinction between
 these subject matter exemptions and the procedural
Case: 22-1843     Document: 55      Page: 9    Filed: 02/13/2024




 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 de-
 spite the cross-reference to § 553. See generally Levesque
 v. Block, 

, 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, 

, 482–83 (10th Cir. 1983)
 (discussing the 

(b) exceptions to notice-and-
 comment rulemaking in the context of the Food Stamp
 Act). Chestek has therefore offered no support for its posi-
 tion that the cross-reference to § 553 in 

(b) dis-
 places 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 inter-
 pretive rules under the same provision of § 553(b). See
 Cooper Techs., 536 F.3d at 1336–37 (holding that 

, and thus 

(b)(2)(B), does not require no-
 tice-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 require-
 ment.
     Having found the challenged rules within the proce-
 dural 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 ad-
 dress requirement.
                               II
     Next, Chestek argues that the USPTO’s promulgation
 of the domicile address requirement was arbitrary and ca-
 pricious. An agency rule is arbitrary and capricious if “the
 agency has relied on factors which Congress has not in-
 tended it to consider, entirely failed to consider an
Case: 22-1843     Document: 55      Page: 10    Filed: 02/13/2024




 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., 

 (1983). Courts must “uphold
 a decision of less than ideal clarity if the agency’s path may
 reasonably be discerned.” 

 (quoting Bowman Transp.,
 Inc. v. Arkansas-Best Freight Sys., Inc., 

 (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., 

 (1947).
     Chestek argues that the final rule is arbitrary and ca-
 pricious 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 ad-
 dress 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 insuf-
 ficient justification for the domicile address requirement is
 incorrect. The USPTO adopted the domicile address re-
 quirement 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 ex-
 plain the inadequacies of the current mechanisms and
Case: 22-1843    Document: 55      Page: 11    Filed: 02/13/2024




 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 “con-
 dition 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 busi-
 ness of a juristic entity.” Final Rule at 31510. Because the
 USPTO would need to know an applicant’s domicile ad-
 dress to determine if the U.S. counsel requirement applied,
 it reasonably required all applicants to provide their domi-
 cile address. The USPTO’s justification for all applicants
 to provide a domicile address is therefore at least reasona-
 bly 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 pol-
 icy.” Encino Motorcars, LLC v. Navarro, 

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

 (2009)). As Chestek acknowledges,
 

 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 (ex-
 plaining that the domicile address requirement would re-
 vise “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
Case: 22-1843    Document: 55     Page: 12    Filed: 02/13/2024




 12                                       IN RE: CHESTEK PLLC




 only “conclusory statements” to explain its new policy. En-
 cino Motorcars, 

.
      Additionally, the USPTO’s statements that the revi-
 sions from the proposed rule to the final rule were “[f]or
 consistency” were not offered as justification for the domi-
 cile 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 po-
 sition from the proposed rule to the final rule because, con-
 trary to Chestek’s position, the USPTO did not drastically
 shift that position. In the proposed rule, the USPTO indi-
 cated that it would follow other countries’ practices and
 condition the U.S. counsel requirement on domicile. Pro-
 posed Rule at 4396. It then defined domicile under
 

(o) to include “the permanent legal place of
 residence of a natural person.” 

. The USPTO
 also included in the proposed rule revisions to 

(a) to require applicants to provide “[t]he address of
 the applicant” and to 

(b) to state that it
 could request any information necessary from applicants to
 determine if the U.S. counsel requirement applied. 

 at
 4402–03. The information necessary to determine the ap-
 plicability of the U.S. counsel requirement would logically
 include information verifying the applicants domicile ad-
 dress. 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 pro-
 vide a reasoned justification.
Case: 22-1843    Document: 55      Page: 13    Filed: 02/13/2024




 IN RE: CHESTEK PLLC                                        13



     Finally, Chestek argues that the domicile address re-
 quirement was arbitrary and capricious because the final
 rule failed to consider privacy and other concerns intro-
 duced 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, 

. On appeal,
 courts must “judge the reasonableness of an agency’s deci-
 sion on the basis of the record before the agency at the time
 it made its decision.” Rural Cellular Ass’n v. F.C.C.,
 

 (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 exper-
 tise 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).
Case: 22-1843   Document: 55   Page: 14   Filed: 02/13/2024




 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 re-
 fusal to register Chestek’s mark. We have considered
 Chestek’s remaining arguments and find them unpersua-
 sive.
                      AFFIRMED