601    Requirement for Representation Based on Domicile of Mark Owner

37 C.F.R. §2.11  Requirement for representation.

(a) An applicant, registrant, or party to a proceeding whose domicile is not located within the United States or its territories must be represented by an attorney, as defined in § 11.1 of this chapter, who is qualified to practice under § 11.14 of this chapter. The Office cannot aid in the selection of an attorney.

An applicant’s or registrant’s domicile will determine whether the applicant or registrant is required to be represented before the USPTO by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state, Commonwealth, or territory or the District of Columbia (a "qualified U.S. attorney"). 37 C.F.R. §§2.11(a), 11.1, 11.14(e); see TMEP §602.

An applicant or registrant whose domicile is not located within the United States or its territories must be represented by a qualified U.S. attorney. 37 C.F.R §2.11(a).

An applicant or registrant whose domicile is located within the United States or its territories may represent himself or herself in prosecuting an application or maintaining a registration or may be represented by a qualified U.S. attorney. 37 C.F.R §§11.1, 11.14(e).

In the case of joint owners, if any single owner of the application or registration is domiciled in the United States, the applicants or registrants are not required to appoint a qualified U.S. attorney unless the U.S. address appears to be incorrect.

The USPTO cannot aid an applicant or registrant in selecting a qualified attorney. 37 C.F.R §2.11(a). To find the names of attorneys who are licensed to practice law in the U.S. and handle trademark matters, consult telephone listings or the internet, or contact the attorney referral service of a U.S. state or local bar association (see the American Bar Association’s Consumers’ Guide to Legal Help). For more information about selecting a U.S.-licensed trademark attorney, see the USPTO website.

601.01    Determining an Owner’s Domicile

For a natural person, domicile is the permanent legal place of residence, which is the place the person resides and intends to be his/her principal home. 37 C.F.R §2.2(o).

For a juristic entity, domicile is the principal place of business, which is the entity’s headquarters where its senior executives or officers ordinarily direct and control the entity’s activities and is usually the center from where other locations are controlled. 37 C.F.R §2.2(o)-(p).

Determining whether an applicant’s or registrant’s domicile is within or outside the United States is based on the applicant’s or registrant’s street address.

In most cases, a post-office box, a "care of" (c/o) address, address provided by a mail forwarding service, or other similar variation cannot be a domicile address because it 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). TMEP §601.01(b)(1). When necessary, the USPTO may require an applicant or registrant to furnish information or documentation to support an applicant’s or registrant’s domicile address. See 37 C.F.R §2.11(b).

601.01(a)    Owners with a Non-U.S. Domicile

Examination and post-registration. If a submission lists a foreign address (i.e., any street address that is located outside of the United States and its territories) as the applicant’s or registrant’s domicile, and the applicant or registrant is not represented by a qualified U.S. attorney, the examining attorney or post-registration specialist will issue an Office action that requires the applicant or registrant to appoint a qualified U.S. attorney as its representative and to provide that attorney’s bar information. The Office action will also include any other applicable refusals and/or requirements.

Section 66(a) applications. The requirement for a foreign-domiciled applicant to appoint a qualified U.S. attorney is not a filing-date requirement for an initial §66(a) application because these are transmitted to the USPTO by the International Bureau (IB) and generally do not include an appointment of an attorney authorized to practice before the USPTO. If an Office action must issue for other refusals and/or requirements, the examining attorney will require the applicant to appoint a qualified U.S. attorney as its representative and to provide that attorney’s bar information. See TMEP §601.01(a) regarding applicants with a non-U.S. domicile and §714.05 regarding the deadline within which all refusals and/or requirements must be notified to the IB. If, however, a §66(a) application is otherwise in condition for approval for publication upon first action, the examining attorney may approve the application for publication and should not require the applicant to appoint an attorney authorized to practice before the USPTO or to provide an email address. See TMEP §803.05(b) regarding applicant’s email address as a required element of an application.

If the applicant responds, but does not appoint a qualified U.S. attorney, the examining attorney will issue a final action as to the requirement to appoint such an attorney and all other unresolved refusals and/or requirements, if the file is otherwise in condition for a final action. If the registrant responds in a post-registration matter, but does not appoint a qualified U.S. attorney, the post- registration specialist will issue a second action maintaining the requirement to appoint such an attorney and maintaining all prior unresolved refusals and/or requirements.

If the applicant or registrant responds by appointing a qualified U.S. attorney, the examining attorney or post-registration specialist will withdraw the requirement to appoint such an attorney. If the applicant or registrant responds by amending to a U.S. street address, but does not appoint a qualified U.S. attorney, the USPTO will follow the procedures in TMEP §606.01(b). If the applicant or registrant responds by amending its domicile address to a U.S. post-office box, "care of" (c/o) address, address provided by a mail forwarding service, or other similar variation, the USPTO will follow the procedures in TMEP §601.01(b)(1).

If the examining attorney or post-registration specialist issues an Office action that (1) maintains only a requirement to appoint a qualified U.S. attorney and/or for additional information under 37 C.F.R §2.11(a), (b), and/or (c), or (2) maintains only the requirement for the TEAS Plus processing fee under 37 C.F.R §2.22(c)  in addition to one or all of the requirements under 37 C.F.R §2.11(a), (b), and/or (c), an applicant or registrant may only seek review of the requirement(s) by filing a petition to the Director under 37 C.F.R §2.146. 37 C.F.R §§2.11(f), 2.165, 2.186, 7.40.

Further, if it is clear that the applicant or registrant is foreign-domiciled and has not appointed a qualified U.S. attorney to represent it, then amendments to the application or registration are not authorized and may not be entered. If it is not clear whether the applicant or registrant is foreign-domiciled, and the examining attorney or post-registration specialist must issue the requirements regarding domicile and to appoint a qualified U.S. attorney, then amendments to the application or registration are not authorized and may not be entered until the applicant or registrant establishes that its domicile is in the United States. For example, the examining attorney may not contact an applicant to authorize an examiner’s amendment or to issue a priority action in this situation.

Petitions, requests for reinstatement, and post-publication amendments. If the USPTO receives a petition to the Director, a request for reinstatement, or a post-publication amendment filed by a foreign domiciliary, an attorney or paralegal in the Office of the Deputy Commissioner for Trademark Examination Policy will notify the filer that appointment of a qualified U.S. attorney is required and of any other deficiencies. The applicant or registrant will be granted 60 days to appoint a qualified U.S. attorney and to supplement the petition or request for reinstatement, as appropriate. If the applicant or registrant does not appoint a qualified U.S. attorney and submit any additional necessary information within the time allowed, the petition or request for reinstatement will be denied or the amendment will not be entered. Filing a petition does not extend the time for responding to an outstanding Office action or other statutory deadline.

TTAB proceedings. The TTAB will suspend proceedings when requiring a foreign-domiciled party to appoint a qualified U.S. attorney to represent it and inform the party of the time frame within which it must appoint such an attorney. TBMP §114.01.

601.01(b)    Owners with a U.S. Domicile

If a U.S. address (i.e., any street address that is located within the United States and its territories) is listed as the applicant’s or registrant’s domicile in any submission, an applicant or registrant may, but generally need not, appoint a qualified U.S. attorney as its representative.

Under some circumstances, the USPTO will require the applicant or registrant to provide documentation to support its U.S. address. See 37 C.F.R §§2.11(b), 2.61(b), 2.189. For example, if the address appears incorrect, the examining attorney or post-registration specialist will issue an Office action requiring the applicant or registrant to provide documentation, such as that listed within this section, to support the specified address. If the applicant or registrant is a foreign citizen or entity with a U.S. street address, and is not represented by a qualified U.S. attorney, the examining attorney or post- registration specialist will issue an Office action requiring the applicant or registrant to either appoint a qualified U.S. attorney or provide documentation supporting the specified U.S. street address. In such cases, the Office action will also include all other applicable refusals and/or requirements. If the applicant or registrant responds by appointing a qualified U.S. attorney, the examining attorney or post-registration specialist will withdraw the requirement for documentation supporting the U.S. street address, unless the U.S. street address appears to be incorrect. The requirement will be reissued if the qualified U.S. attorney withdraws or is subsequently revoked.

An applicant or registrant who provides acceptable documentation supporting its U.S. address is not required to appoint a qualified U.S. attorney.

If the applicant responds but does not appoint a qualified U.S. attorney or provide the information necessary to support its U.S. street address, the examining attorney will issue a final action as to the requirements regarding domicile, to appoint a qualified U.S. attorney, and all other unresolved refusals and/or requirements, if the application is otherwise in condition for final action. If the registrant responds in a post-registration matter but does not appoint a qualified U.S. attorney or provide the information necessary to support its U.S. street address, the post-registration specialist will issue a second action maintaining the requirements regarding domicile, to appoint a qualified U.S. attorney, and all other unresolved refusals and/or requirements.

Examples of documents that can support a U.S. street address include the following:

  • (a) For an individual, documentation showing the name and listed address of the individual, such as one of the following:
    • (i) a current, valid signed rental, lease, or mortgage agreement;
    • (ii) a current, valid homeowner’s, renter’s, or motor vehicle insurance policy; or
    • (iii) a computer-generated bill issued by a utility company dated no earlier than 60 days before the application or post-registration document filing date.
  • (b) For a juristic entity, documentation showing that the address is the applicant’s or registrant’s business headquarters, such as one of the following:
    • (i) the most recent final annual or quarterly report or other similar report; or
    • (ii) a current, valid signed rental, lease, or mortgage agreement for office space.

601.01(b)(1)    Post-office Box, "Care of" (c/o) Address, Address Provided by a Mail Forwarding Service, or Other Similar Variation

The USPTO allows applicants and registrants to provide a mailing address for the owner that is different from its domicile address. A post-office box, "care of" (c/o) address, address provided by a mail forwarding service, or other similar variation can be a mailing address, but in most cases cannot be a domicile address because such address usually 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 its senior executives or officers ordinarily direct and control the entity’s activities and tends to be the center from where other locations are controlled (for a juristic entity).

For example, a mail forwarding service is a private service that provides an address where mail can be sent to before being forwarded to a second address. If an applicant or registrant lists such an address as its domicile, or fails to provide a street address entirely, the applicant or registrant will be required to provide a street address. Alternatively, an applicant may demonstrate that the listed address is, in fact, its domicile.

If an applicant lists as its domicile address a post-office box, "care of" address, address provided by a mail forwarding service, or other similar variation, even if the address is hidden (see TMEP §601.01(d)), or no street address at all, the examining attorney or post registration specialist will require the applicant’s or registrant’s street address. See 37 C.F.R §2.32(a).

If the applicant is an unrepresented U.S. citizen who specifies a post office box, "care of" address, mail forwarding, or non-street address as the owner address, the examining attorney may contact the applicant to obtain the applicant’s domicile address and may enter the address by examiner’s amendment, if otherwise appropriate. See TMEP §609.02(b) regarding the requirements for requesting to change the correspondence address.

If the applicant or registrant adds a non-U.S. street address as its domicile, the USPTO will follow the procedures in TMEP §601.01(a). If the applicant or registrant adds a U.S. street address as its domicile, the USPTO will follow the procedures in TMEP §601.01(b).

If the applicant does not amend the listed domicile to a street address, and fails to demonstrate that the listed address is its domicile, the examining attorney will issue a final action as to the requirements regarding domicile and all other unresolved refusals and/or requirements, if the application is otherwise in condition for final action. If the registrant does not amend the listed domicile to a street address, and fails to demonstrate that the listed address is its domicile, the post-registration specialist will issue a second action maintaining the requirements regarding domicile and all other unresolved refusals and/or requirements.

No requirement for a street address should be made to U.S. government entities or federally recognized American Indian and Alaska Native tribes with a U.S. post-office box address.

601.01(c)    Domicile Address Must Be Kept Current

37 C.F.R. §2.189  Requirement to provide domicile address.

An applicant or registrant must provide and keep current the address of its domicile, as defined in § 2.2(o).

An applicant or registrant must provide and keep current its domicile address, as defined in TMEP §601.01, and inform the USPTO of any changes to that address. An applicant or registrant can update its domicile address with the USPTO by using the Change Address or Representative TEAS form. See TMEP §601.01(d) regarding how an applicant or registrant can hide such an address from public view.

601.01(d)    Hiding the Domicile Address

Most TEAS forms allow an applicant or registrant to specify the owner’s mailing address, which is publicly viewable, and a separate domicile address, which is masked or hidden from public view. If the applicant or registrant provides the same address as its mailing address and domicile address in those forms, the address will be viewable by the public. To hide the applicant’s or registrant’s domicile address from public view, the applicant or registrant must provide a mailing address that differs from its domicile address and enter the domicile address into the dedicated "Domicile Address" fields on the Owner Information page within most TEAS forms.

In an extraordinary situation, an individual applicant or registrant who does not have a mailing address that is different from its domicile address may also request a waiver of the requirement to make their address public by filing a Petition to the Director. See 37 C.F.R §2.146(a)(5); TMEP §1708. In such cases, when filing the application, the applicant may enter "Petition" in the street address field of the TEAS form and separately file a petition to waive the requirement to make public their street address. If the petition is granted, the applicant must also provide an address where mail can be received. Filing a petition does not extend the time for responding to an outstanding Office action or other statutory deadline.

If an Office action is being issued that questions the validity of a domicile address that was hidden from public view, an examining attorney should not list the exact address in the Office action. However, if evidence is being attached to the Office action to support the inquiry, an examining attorney may attach evidence that identifies the address if necessary. Applicant may then later petition the USPTO to have that information redacted.

601.02    Communications with Applicant or Registrant Who Is Represented by an Attorney

37 C.F.R. §2.18(a)(2) 

 If an attorney is recognized as a representative pursuant to § 2.17(b)(1), the Office will correspond only with that attorney. A request to change the correspondence address does not revoke a power of attorney. Except for service of a cancellation petition, the Office will not correspond directly with the applicant, registrant, or a party to a proceeding, or with another attorney from a different firm, unless:

  • (i) The applicant or registrant files a revocation of the power of attorney under § 2.19(a) and/or a new power of attorney that meets the requirements of § 2.17(c);
  • (ii) The attorney has been suspended or excluded from practicing in trademark matters before the USPTO; or
  • (iii) Recognition of the attorney has ended pursuant to § 2.17(g).

If an applicant or registrant is represented by a qualified U.S. attorney, the USPTO will conduct business only with that attorney, unless that representation is terminated, a new power of attorney is properly filed, or until recognition ends.  37 C.F.R. §2.18(a)(2).  See TMEP §604.04 regarding duration of recognition, §606 regarding revocation of an attorney, and §607 regarding withdrawal of an attorney. See also TMEP §602.01 regarding communicating with an attorney from the same U.S. law firm as the appointed U.S. attorney.

If the applicant or registrant contacts the USPTO regarding the application or registration, he or she will be advised that the USPTO will only conduct business with the qualified U.S. attorney.  USPTO employees may answer general questions about the application or registration record and the procedures for obtaining and maintaining a registration, and are encouraged to refer the applicant or registrant to publicly available information on the USPTO’s website.  See TMEP §1805 regarding general inquiries from the public.

The USPTO will not accept responses or amendments authorized or signed by the applicant or registrant if there is a qualified U.S. attorney of record See 37 C.F.R. §2.18(a)(2).  See TMEP §§611–611.06(h) regarding signatures on documents filed in the USPTO. See TMEP §707.01 and §708.02 regarding individuals who can authorize examiner’s amendments and priority actions.

An applicant or registrant may revoke the authority of a qualified U.S. attorney to represent the applicant or registrant, or the attorney could withdraw from representing the applicant or registrant. 37 C.F.R. §2.19(a)(1), (b). However, in these circumstances, an applicant or registrant whose domicile is located outside the United States or its territories is required to be represented, and must appoint a new qualified U.S. attorney as its representative, with whom the USPTO will correspond. 37 C.F.R. §2.11(a).

See TMEP §604.03 regarding changes of attorney and TBMP §§114–114.08 regarding representation of parties to proceedings before the Trademark Trial and Appeal Board.