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.