Previously, an applicant for a U.S. trademark could reside anywhere in the world and still submit their trademark application to the United States Patent and Trademark Office on their own. However, new laws now require that foreign-domiciled trademark applicants without a United States address must hire a U.S. licensed attorney to represent them with respect to their U.S. trademark applications. If you are curious about these requirements and what you will need to do for your trademark application, consider reaching out to an experienced intellectual property attorney at the War IP Law, PLLC at 202-800-3754.
Attorney Requirement for Foreign-Domiciled Trademark Applicants
A ruling on July 2, 2019, by the United States Patent and Trademark Office (USPTO) stipulates all foreign-domiciled trademark applicants must use a United States licensed attorney for their trademark applications.
The Trademark Act has required applicants to specify the trademark applicant’s citizenship as well as their place of domicile. However, this new rule now divides those who live or domicile in the United States from those who live in a foreign country or are foreign-domiciled. Applicants who are foreign-domiciled must now be represented by the U.S. licensed attorney with respect to their U.S. trademark application before the USPTO according to 37 C.F.R. §§2.2(o), 2.11(a), 2.189.
The USPTO requires all applications to include the applicant’s domicile address but for those who live outside the United States, they must provide this information alongside that of their U.S. licensed attorney in accordance with 37 C.F.R. §§2.11(a), 2.32(a)(2), (a)(4), 2.189.
All foreign-domiciled applicants submitting online applications with the Trademark Electronic Application System (TEAS) Plus still have to designate a United States licensed attorney in order to submit their completed application, as per 37 C.F.R. §2.22(a)(21).
What Is a Domicile?
According to the USPTO, an applicant’s domicile is their place of permanent and legal residence, or where they have their principal place of business, as explained below:
- A principal place of residence is where a person resides for the majority of the time, or what they would consider their principal home or main home.
- A principal place of business is where the headquarters for a company is located, usually where you would find senior executive offices for the headquarters or those who control the activities of the business.
Applicants and registrants have to maintain current information on their domicile so that the USPTO can determine whether they are domiciled within the United States or outside of the United States. If at any time during the course of your application you change the location of your primary residence or your principal place of business, you must make changes using the electronic Change Address or Representation Form.
For example: If an applicant has a care-of (℅) address or a post office box, a different address will be required by the USPTO as a post office box cannot identify the location where the individual lives, or the location of the primary place of business. At any time the USPTO can require confirmation of the domicile address.
If such a request is made, or if you need a U.S. licensed attorney to represent you before the USPTO, consider reaching out to the experienced intellectual property attorneys at War IP Law, PLLC for more information on how to confirm your address or domicile.
United States Domiciled Trademark Applications
If any address in the United States and its territories are listed on an application as the primary residence, no attorney is required for representation. However, even in this case, it may be very beneficial to employ the services of a U.S. licensed attorney to assist you with your U.S. trademark application.
As mentioned, there are circumstances where the USPTO will request documentation to corroborate a United States address.
- If, for example, the examining attorney finds an error in the address, they can request documentation to confirm the United States address.
- If the applicant is a foreign citizen but the applicant has a US-based address, the examining attorney can request documentation to confirm the US-based address if there is no attorney listed on the application.
In cases such as these, the USPTO will issue an Office Action requiring additional documentation from the trademark applicant.
Foreign-Domiciled Trademark Applications
If a foreign address is listed on the application as the primary residence and no United States licensed attorney represents the applicant, the examining attorney will issue an Office Action requiring the applicant to appoint a United States licensed attorney to serve as their representative. This applies to all submissions on or after August 3rd, 2019, as well as submissions submitted prior to the August 3rd deadline but not examined until after the deadline.
What if I Refuse to Appoint A United States Attorney?
If you receive the Office Action requiring you to appoint a US licensed attorney and you do not, the examining attorney might issue a final action stipulating that your trademark application will be refused until such time as you appoint a US licensed attorney.
Additionally, it is important to note that not all Canadian patent agents can represent applicants for US trademarks. With few exceptions, only a US licensed attorney can be used for foreign-domiciled trademark applicants. If a person continues with a patent agent only, their application should be refused until such time as they appoint a United States attorney.
What if I Appoint An Attorney?
Once you appoint a US licensed attorney, any Office Action filed against your application rejecting the application for improper representation will be withdrawn by the examining attorney. From that point onward, all correspondence will go through your US licensed attorney and your application will be reviewed in its entirety.
Multiple Owners of a Company
If there are multiple owners of a company, the USPTO does not require an attorney, again, unless none of the owners are domiciled in the United States.
For example: If there are three business owners looking to submit a trademark application for their brand name, and one of them lives in the United States, that address can be listed on the trademark application, and no additional United States attorney is required. However, if all three company owners reside outside of the United States, a United States attorney is required for all correspondence with the USPTO.
Consider Contacting an Experienced Intellectual Property Attorney Regarding the Requirements For Foreign-Domiciled Trademark Applicants
There are many requirements you want to consider for foreign-domiciled trademark applicants. If you want to know more about these complex requirements and how to ensure your legal rights remain protected, consider visiting with an experienced intellectual property attorney at War IP Law, PLLC at 202-800-3754. We can provide a consultation to review your trademark needs and what requirements you might face moving forward.