Real street address of applicant required for United States Trademark Applications

A trademark is something that distinguishes products by one company from similar products produced by competitors. A trademark is traditionally thought of as a symbol, word, or phrase, but many other things that a manufacturer uses to brand its products can be eligible for trademark protection. In the United States using a trademark to brand goods that are sold in commerce is the event that grants a trademark user rights. Registration of a trademark with the United States Patent and Trademark Office grants a trademark user additional rights, however registration is not a prerequisite to the grant of trademark rights.

A trademark user can register their trademark with the United States Patent and Trademark Office by filing a trademark application. The trademark application is reviewed by a trademark examining attorney, before a registration is granted. The examining attorney reviews the trademark application to ensure that the trademark is not confusing similar to any trademark already registered, and many other statutory and regulatory requirements.

In 2019 the USPTO enacted updated rules to ensure the quality of trademark applications and protect the interests of parties applying for trademark registration. The USPTO received comments on the new rules and published the final rules on July 2, 2019. On September 6, the USPTO published an Exam Guide to help explain how the new rule apply.

All trademark applications must include the applicant’s domicile address, and foreign-domiciled applicants must appoint a U.S. attorney to meet the requirements for a complete application. See 37 C.F.R. §§2.11(a), 2.32(a)(2), (a)(4), 2.189. Foreign-domiciled applicants submitting an application using the Trademark Electronic Application System (TEAS) Plus filing option will be required to designate a United States attorney in order to complete the submission of the application. 37 C.F.R. §2.22(a)(21).

The term “domicile” means the “permanent legal place of residence” of a natural person or the “principal place of business” of a juristic entity. 37 C.F.R. §2.2(o). Under this rule, a person’s “permanent legal place of residence” is the place the person resides and intends to be the person’s principal home. The “principal place of business” is the location of a juristic entity’s headquarters where the entity’s 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(p). Applicants and registrants must provide and keep current the address of their domicile. 37 C.F.R. §§2.22(a)(1), 2.32(a)(2), 2.189.

In most cases, a post-office box, a “care of” (c/o) address, or other similar variation cannot be a domicile address because it generally 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). When necessary, the USPTO will require an applicant or registrant to confirm its domicile address.

If an applicant lists as its domicile a post-office box address or “care of” address or similar variation, or no street address at all, the examining attorney or post registration specialist will require the applicant’s or registrant’s street address. 37 C.F.R. §2.32(a). If the applicant or registrant is a foreign citizen or entity with a U.S. street address, and is not represented by a U.S. attorney, the examining attorney or postregistration specialist will issue an Office action requiring, at the choice of the applicant or registrant, either the addition of U.S. counsel or documentation supporting the address.

While these rules may seem cumbersome, the intent is not to exclude foreign citizens from registering their trademark in the United States, rather it is to ensure that the person filing the trademark application is the rightful owner of the trademark. The USPTO budget is funded by application fees, it is not going to turn away paying customers.

If you need assistance filing a trademark application or maintaining your registered trademark in the United States, please contact the authors of this blog.

If you have questions or comments for the authors of this blog please email us at: admin@uspatentlaw.cn