Lewis Roca Blog

The United States Patent and Trademark Office's (USPTO) new rule requiring foreign-domiciled trademark applicants, registrants, or trademark-proceeding parties to be represented by a U.S. attorney (84 FR 31498) took effect on August 3, 2019. The USPTO issued an accompanying initial Examination Guide in early August to help implement the rule. After taking into account responses to the initial Examination Guide, the USPTO recently revised those guidelines.

Particularly, the revised Examination Guide [link] addresses concerns with language in the initial Examination Guide with respect to determining an applicant's domicile. The initial Examination Guide provided separate sections for determining domiciles for U.S. citizens and foreign citizens. However, the revised Guide does not make this distinction and merely provides for “U.S. Domicile" (no U.S. attorney representation necessary) and "non-U.S. Domicile" (U.S. attorney representation necessary).

Under the heading "Determining Domicile," the initial Guide included language that "[f]oreign citizens must comply with U.S. visa immigration laws to claim the U.S. as their permanent legal residence." Such reference to compliance with "visa immigration laws" and "permanent legal residence" raised concern among trademark examiners who would now potentially be required to ask about an applicant's immigration status.

The revised Examination Guide has eliminated the language regarding complying with "visa immigration laws" and claiming the U.S. as a "permanent legal residence." Rather, the revised Guide provides that if a U.S. street address is listed as the domicile, a foreign applicant need not appoint a U.S. attorney as its representative. While no proof of compliance with visa immigration laws is required, the revised Guide indicates that under some circumstances, such as if the address appears incorrect, the USPTO will require an applicant to provide supporting documentation of its address.

Further, the initial Examination Guide indicated that the use of a P.O. box as a domicile address was prohibited, requiring instead a physical address to make an initial domicile determination. However, concerns were raised that many trademark applicants do not have a business address and would then be forced to provide their home address.

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