New Requirements for TM Registrants

Scenario: You worked and lived your whole life in the flat plains of Kansas. Then, while on vacation, you discover that you have fallen in love with a cute villa on a coast in a foreign country. What does this mean for your business, your trademarks?

 Increased Requirements for Applicants

The Trademark Act has long required that the United States Patent and Trademark Office (USPTO) provide an applicant's (or registrant's) "domicile and citizenship.” 15 U.S.C. §1051(a)(2). On July 2, 2019, the USPTO published a final rule (Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants, 84 FR 31498) which further requires foreign applicants, (those whose domicile is not located within the United States (U.S.) or its territories) to be represented by a U.S. attorney. As a result, foreign-domiciled applicants submitting an application or maintenance filing using the Trademark Electronic Application System (TEAS) are now required to designate a U.S. attorney in order to complete the submission. 37 C.F.R. §2.22(a)(21).

Increased Requirements for Attorneys

In addition, the final rule requires U.S. attorneys to prove that they are an active member in good standing of the bar of the highest court of a state in the U.S. (including the District of Columbia or any Commonwealth or territory of the U.S.). According to this, patent agents, lawyers, or previous attorneys may not represent clients before the USPTO in trademark matters regardless of client consent. It also removes the ability of foreign patent attorneys or agents to seek reciprocal recognition to practice before the USPTO in trademark matters.

Determining Domicile vs. PO BOX

The term “domicile” means 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). Applicants and registrants must provide and keep current the address of their domicile. 37 C.F.R. §§2.22(a)(1), 2.32(a)(2), 2.189. 3 The initial determination of whether an applicant’s, registrant’s, or party’s domicile is within or outside the U.S. is based on its street address. In most cases, a post-office box, a “care of” (c/o) address, or other similar variation cannot be a domicile address because it generally does not identify the location of the place the person resides and intends to be the person’s principal home (for a natural person) or the location of a juristic entity’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities (for a juristic entity). For more information, the USPTO issued a full Examination Guide 4-19 (Revised).

Impact on Maintenance for Registrations

When an applicant has previously listed a PO Box as a place of business, in order to determine if the current requirements are met, the USPTO requires that applicant to furnish the information necessary for the proper determination of whether the applicant is subject to the requirement for a U.S. attorney. See 37 C.F.R. §2.11(b). As a result, all applications must now include the applicant’s domicile address, and foreign-domiciled applicants must appoint a U.S. attorney to meet the requirements for a complete application. See 37 C.F.R. §§2.11(a), 2.32(a)(2), (a)(4), 2.189. As many applicants have previously listed a PO Box as their principle place of business, the USPTO has issued a slew of Office Actions for maintenance proceedings even for registered trademarks asking that the domicile of the applicant be clarified.

Responding to a Request for Domicile Address

If you are a US citizen with a US domicile, you can respond to the Office Action by submitting a Change of Address (CAR) form which clearly indicates your actual domicile. If you do not have a US domicile, it will be necessary to appoint a US representative. Even if you do have a US domicile, but you are concerned about displaying your personal information, you can still appoint a US representative. If you have any questions about appointing a US representative to maintain your trademark, why not give us a call? We're always happy to help.

Patent Attorney, Sarita Pickett, April 14, 2021.

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