1. All Applicants/Registrants — Domicile Information (required now)
The USPTO now requires all applicants and registrants to provide their physical street address in order to establish their “domicile.” The USPTO requires domicile information even if the trademark owner is represented by counsel. Domicile is defined as the permanent legal place of residence of a natural person or the principal place of business of a juristic entity. Principal place of business is defined as 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.
Because of this new rule, it is necessary to provide a street address in new and pending trademark applications, and when a maintenance or renewal document is filed. The owner’s address can no longer be a P.O. Box or an address “c/o” a law firm or other company. For pending applications that do not provide a street address, an Office action will issue requiring domicile information. To the best of our knowledge, this information will be displayed publicly on the USPTO website.
If we have assisted you with filing any trademark applications that do not state the applicant’s domicile address, please contact your Fross Zelnick attorney to discuss how to update your application with this newly-required information.
The USPTO has issued an examination guide that details the information required to establish the lawful domicile of non-U.S. persons or entities that list an address in the U.S., including “an explanation of the basis for claiming that the U.S. address” is the applicant’s lawful permanent residence (if an individual) and related supporting documentation.
2. All Applicants/Registrants — Email Address Information (required as of October 5, 2019)
Effective October 5, 2019, the USPTO will also require all applicants and registrants to provide a valid email address for correspondence, and to keep that email address current. While the Office will continue to write only to the appointed attorney in pending applications if there is one, the new all-electronic processing initiative requires the Office to collect email addresses from all trademark owners. The email addresses will not be private and will appear in the USPTO’s public repository of documents filed in trademark applications/registrations. For this reason, and also to avoid the need to change the email address in the case of company-owned applications/registrations if individuals leave the company, applicants and registrants may prefer to provide a general contact email address rather than one associated with a particular person. Please contact your Fross Zelnick attorney to provide the email address that we should add to the record of your application(s)/registration(s).
3. Non-U.S. Applicants/Registrants Only — Must File USPTO Documents Through U.S.-Licensed Attorneys (required now).
The U.S. Patent and Trademark Office now requires that, on or after August 3, 2019, all USPTO filings (including applications, responses to Office actions, statements of use, maintenance documents, and petitions) by a foreign domiciliary must be submitted by a U.S.-licensed attorney. Even if the application or other document is otherwise approved, the USPTO Examiner will issue an Office action requiring the foreign domiciliary applicant to appoint a U.S. attorney. However, if USPTO documents were filed before August 3, 2019 but examined after that date, filings that are approved without any objections will not require the appointment of a U.S.-licensed attorney as to that particular filing. Nevertheless subsequent filings, if any, must be submitted by a U.S.-licensed attorney.
The only exception is for Madrid Extensions into the U.S.: If no substantive issues are raised and the application is otherwise in condition for publication, the Examiner will not require the appointment of a U.S.-licensed attorney. Conversely, if there are substantive issues raised, the Office action will include the requirement that the applicant must appoint a U.S.-licensed attorney.
All U.S.-licensed attorneys submitting documents to the USPTO must include in the filing their bar admission number, the state in which they are licensed to practice, and the year of their bar admission.