114.07    Designation of Domestic Representative

37 CFR § 2.24  Designation of representative by foreign applicant .

  • (a)
    • (1) If an applicant is not domiciled in the United States, the applicant may designate a domestic representative (i.e., a person residing in the United States on whom notices or process in proceedings affecting the mark may be served) by either:
      • (i) Setting forth the name and address of the domestic representative in the initial application; or
      • (ii) Filing a separate designation setting forth the name and address of the domestic representative, signed by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under § 11.14 of this chapter.
    • (2) If the applicant does not file a document designating the name and address of a person residing in the United States on whom notices or process in proceedings affecting the mark may be served, or if the last person designated cannot be found at the address given in the designation, then notices or process in proceedings affecting the mark may be served on the Director.
    • (3) The mere designation of a domestic representative does not authorize the person designated to represent the applicant unless qualified under § 11.14 of this chapter.

37 CFR § 2.119(d)  If a party to an inter partes proceeding is not domiciled in the United States and is not represented by an attorney or other authorized representative located in the United States, the party may designate by document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in the proceeding. If the party has appointed a domestic representative, official communications of the United States Patent and Trademark Office will be addressed to the domestic representative unless the proceeding is being prosecuted by an attorney at law or other qualified person duly authorized under § 11.14(c) of this subchapter. If the party has not appointed a domestic representative and the proceeding is not being prosecuted by an attorney at law or other qualified person, the Office will send correspondence directly to the party, unless the party designates in writing another address to which correspondence is to be sent. The mere designation of a domestic representative does not authorize the person designated to prosecute the proceeding unless qualified under § 11.14(a), or qualified under § 11.14(b) and authorized under § 2.17(b).

Shown below is a suggested format for the designation of a domestic representative (the suggested format should appear below information identifying the proceeding in connection with which it is filed):

Designation of Domestic Representative

(Name of Domestic Representative), whose postal

address is ______________________________

______________________________________,

is hereby designated (Name of Designating Party’s)

representative upon whom notice or process in this

proceeding may be served.

__________________________

(Signature of Designating Party)

__________________________

(Identification of Person Signing)

__________________________

(Date of Signature)

Once a party has appointed a domestic representative, all correspondence in the case will be sent to the domestic representative, unless the party is represented by an attorney or other authorized representative located in the United States, or by a foreign attorney or agent duly qualified under .37 CFR § 11.14(c). See TBMP § 117.06 (Correspondence with Foreign Party).

The designation of a domestic representative is not the equivalent of a power of attorney. [ Note 1.] In other words, a domestic representative cannot represent a party in Board proceedings. The appointment of a domestic representative serves a different purpose, that is to provide a contact and address for service of process. [ Note 2.]

The provision of 37 CFR § 2.24(a)(2) allowing for service of notice or process on the Director is directed to applications during ex parte prosecution, not to service of complaints and papers in Board inter partes proceedings. [ Note 3.]

If the party has not appointed a domestic representative and the proceeding is not being prosecuted by an attorney at law or other qualified person, the Office will send correspondence directly to the party, unless the party designates in writing another address to which correspondence is to be sent. [ Note 4.]

NOTES:

 1.   See TMEP § 610; Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212, 1214 n.4 (TTAB 2012) (discussing difference between an attorney designated solely as domestic representative and an attorney appointed as counsel of record).

 2.   See TMEP § 610.

 3.   Jacques Moret Inc. v. Speedo Holdings B.V., 102 USPQ2d 1212, 1216 (TTAB 2012) (rule governs service of notices or process in applications during ex parte prosecution, not service of complaints and other papers in cancellation proceedings).

 4.   37 CFR § 2.119(d).