1612    Requirement for Registrant’s Correspondence Email and Domicile Address, Representation, and Attorney Identification Information

1612.01    Correspondence Email and Domicile Address of Registrant

The requirement for an owner’s email and domicile addresses is generally required in all post-registration submissions. 37 C.F.R §§2.18(c), 2.23(b), 2.189, 7.25(a); see In re Chestek PLLC, 92 F.4th 1105, 1113, 2024 USPQ2d 297, at *8 (Fed. Cir. 2024) (domicile address requirement affirmed). See TMEP §1612.01(a) regarding an owner’s email address and §1612.01(b) regarding an owner’s domicile address.

1612.01(a)    Correspondence Email Address

Registrants must provide and keep current a valid email address for correspondence. 37 C.F.R. §§2.18(c), 2.23(b), 7.25(a); TMEP §609.01. The registrant’s email address is required even if the registrant has appointed a qualified U.S. attorney, so that the USPTO can contact the registrant if representation ends.

Trademark registrants who are represented by an appointed qualified U.S. attorney may provide an email address of their choice in the owner email field of the TEAS forms. The email address cannot be identical to the listed primary correspondence email address of their attorney. The email address listed in the owner field for trademark applicants while represented by a qualified U.S. attorney will not be publicly viewable. The USPTO makes an effort to mask this field only as a courtesy to make it harder for the data to be scraped for solicitation or other purposes, not because the data is private. Owners should be aware that their email addresses may be made public at any time if and when their counsel is removed from a case for any reason, and are highly encouraged to use email addresses that they use only for USPTO trademark correspondence. All electronic filers are on notice that they have no expectation of privacy in the email addresses they use in trademark filings. The correspondence email address of the attorney will be visible.

Trademark registrants who are not represented by such an attorney will have a correspondence email address that is identical to the owner address. In either situation, the email address can be a unique email address created specifically for this purpose. The email address of a registrant will be visible in TSDR in the correspondence email address field. To avoid receiving unsolicited communications at a personal or business email address, registrants may wish to create an email address specifically for communication and correspondence related to their trademark filings at the USPTO.

For qualified in-house counsel and attorneys representing themselves in a matter, the TEAS forms will still require two different email addresses: one for the owner email address field and one for the attorney email address field. For technical reasons related to the TEAS forms, these addresses cannot be identical.

Certain treaty filers exempt from email requirement. If the registrant is a national of a country that has acceded to the Trademark Law Treaty, but not to the Singapore Treaty on the Law of Trademarks, the requirement to provide the registrant’s email address does not apply. 37 C.F.R. §2.23(c); see TMEP §301.02(a).

See TMEP §§609-609.02(b) and §609.02(d)-(f) regarding establishing and changing the correspondence address.

1612.01(b)    Domicile Address of Mark Owner

Registrants must provide and keep current the address of their domicile and inform the USPTO of any changes to that address. 37 C.F.R. §2.189; see In re Chestek PLLC, 92 F.4th 1105, 1113, 2024 USPQ2d 297, at *8 (Fed. Cir. 2024) (domicile address requirement affirmed); TMEP §601.01(c). A registrant’s domicile address will determine whether the 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 (a qualified U.S. attorney). 37 C.F.R. §§2.11, 11.1, 11.14(e); see TMEP §§601, 602, 1612(b). Although determinative of whether a qualified U.S. attorney is required, the requirement for an owner’s domicile address is separate from the requirement for an attorney. 37 C.F.R §2.189.

See TMEP §§601.01-601.01(b)(1) regarding determining an owner’s domicile and §601.01(d) regarding hiding the domicile address.

1612.02    Representation Based on Domicile of Mark Owner

Mark owner initially unrepresented in post registration filings unless a qualified U.S. attorney is recognized in the filing or is appointed in a separate document. Recognition of a qualified U.S. attorney in a pending application ends when the mark registers. 37 C.F.R. §2.17(g)(1); TMEP §604.03. In addition, recognition of a qualified U.S. attorney established in connection with a §8, §12(c), §15, or §71 affidavit or declaration, §9 renewal application, or §7 request ends upon acceptance or final rejection of the filing. 37 C.F.R. §2.17(g)(2); TMEP §604.03. Accordingly, an owner that is making any of these post-registration submissions is considered unrepresented unless a qualified U.S. attorney (1) is identified in and/or signs the submission or (2) is appointed in a separate power of attorney that is signed by the owner and is filed post registration and, when applicable, following the acceptance of a previous maintenance filing. 37 C.F.R. §2.17(b); TMEP §604.01.

Unrepresented non-U.S. domiciled owners must be represented by a qualified U.S. attorney in all post registration filings. An owner whose domicile is not located within the United States or its territories must 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 (a qualified U.S. attorney). 37 C.F.R. §2.11(a); TMEP §601.

Determining whether owner has non-U.S. domicile. The Post Registration staff must determine whether the owner’s domicile address is outside the United States and its territories. To do this, Post Registration staff must follow the procedures in TMEP §§601-601.01(b)(1).

Issuing an Office action requiring clarification of domicile and requiring a qualified U.S. attorney to represent mark owner with domicile that is or may be outside the United States and its territories. If the owner’s domicile address is or may be outside of the United States and its territories, the Post Registration staff will follow the procedures in TMEP §§601-601.01(b)(1) and issue an Office action requiring clarification of the owner’s domicile and requiring the owner to have a qualified U.S. attorney.

If in a previous Office action the owner was required to be represented by a qualified U.S. attorney and their response was not filed by, nor are they represented by, such an attorney, then the Post Registration staff should issue a second action on all previously raised issues, including the requirement for a qualified U.S. attorney. See TMEP §601.01(a) and (b) regarding when a registrant is required to have U.S. counsel.

Required attorney identification information. See TMEP §1612(c) for more information.

See generally TMEP §§602-602.03(c) regarding persons authorized to practice before the USPTO in trademark matters, including §602.03(a) regarding Canadian trademark attorneys and agents. See also TMEP §604 regarding recognition as a representative and §605.04 regarding powers of attorney filed after registration.

1612.03    Attorney Identification Information

If the registrant is represented by an attorney qualified under 37 C.F.R §11.14  or is required to appoint such an attorney under 37 C.F.R. §2.11(a)  due to its foreign domicile, the registrant must provide the individual attorney’s name, postal address, email address, and bar information. See 37 C.F.R §§2.17(b)(3), 2.18(a)(2), (c). The USPTO requires this information only for the attorney of record (i.e., the primary attorney) and not for associate or other-appointed attorneys. For determining when a U.S.-licensed attorney must be appointed, see TMEP §§601-601.01(b).

Email Address. A valid email address must be provided for the registrant’s attorney, if one is appointed, that differs from the registrant’s email address in order for the USPTO to contact the registrant if representation ends. In this case, the TEAS forms will require email addresses for both the registrant and its attorney. The registrant may provide an email address of its choice, however, the listed primary correspondence email address of the registrant’s attorney cannot be identical to the registrant’s email address, even for in-house counsel and attorneys representing themselves in a trademark matter. Third-party email addresses may not be used as the primary email address for trademark correspondence. The registrant must maintain a current and accurate email address for its attorney of record. See 37 C.F.R §2.18(c).

Attorney bar information. The USPTO requires trademark registrants to provide attorney bar information for recognized attorneys in all trademark filings. 37 C.F.R §§2.17(b)(3). This requirement is not tied to the domicile of the registrant. See id.

Accordingly, the Post Registration staff will determine whether an appointed attorney or one signing or appearing in a post registration filing is properly licensed to practice in the United States and has provided his or her bar information. See 37 C.F.R §§2.17(b)(3), 11.14. See TMEP §602.01(a) for more information about the requirement for attorney bar information.