Trademark Filing in the U.S.: Licensed Attorney and Address Requirements

When applying for a trademark with the United States Patent and Trademark Office (USPTO), one required piece of information is your domicile address. If the address provided is incomplete—for instance, if it lacks a street address—the USPTO is likely to issue an Office Action requesting full details. But why is this information crucial for the USPTO to process your application? There is indeed a reason behind this requirement.

The USPTO requires applicants to provide their domicile address primarily to determine if they need representation by a U.S.-licensed attorney in trademark matters. If you are an applicant or registrant based outside the U.S., you must engage a U.S.-licensed attorney to represent you during the application process. Additionally, it’s crucial to highlight that the address of the trademark owner becomes public once the application is processed. Therefore, we recommend our clients to list their entity, rather than individual names, as the trademark owner and to use the entity’s address for added privacy.

U.S. Legal Representation: A Requirement for Foreign-Domiciled Persons in All Filings

If you are a foreign-domiciled applicant or registrant, you are required to have a U.S.-licensed attorney to represent you when filing an application. This includes using the Trademark Electronic Application System (TEAS) Plus application form, handling all application-related and registration-related submissions via TEAS, making submissions on paper or through the Trademark Trial and Appeal Board’s Electronic System for Trademark Trials and Appeals (ESTTA), and responding to any provisional or other refusals (office actions) under the Madrid Protocol according to Trademark Act Section 66(a). Representation by a U.S.-licensed attorney is compulsory from the beginning for applicants who are not domiciled in the U.S.

The USPTO rule enacted on July 2, 2019, requires that all applicants must provide their address and that foreign-domiciled applicants must have representation by a U.S.-licensed attorney. This rule took effect on August 3, 2019. Applications submitted prior to this date are exempt and will not be subject to the requirements of this rule.

Certainly, the representation required is not just by any attorney but specifically by a U.S.-licensed attorney. Additionally, these attorneys must provide the USPTO with a statement confirming their active membership in good standing with the bar of the highest court of a U.S. state, commonwealth, or territory.

Understanding Foreign-Domiciled Persons

Who exactly are “foreign-domiciled persons”? In the context of U.S. trademark law, foreign-domiciled applicants or registrants are those who must secure the services of a qualified U.S.-licensed attorney to represent them before the USPTO and to handle any maintenance filings. A person or entity qualifies as foreign-domiciled under one of two conditions:

• An individual who maintains a permanent legal residence outside the United States or its territories.
• An entity whose principal place of business, or headquarters, is located outside the United States or its territories.

File Your Trademark with Oguz Law’s Licensed Trademark Attorneys

At Oguz Law, we address all of your needs throughout the trademark application process from beginning to the end. We initiate your application by assessing the registrability of your desired trademark, compiling a comprehensive research report, and then conducting a meeting to review the potential risks highlighted in the report with our clients. At this stage, we prioritize open communication to ensure our clients fully understand the risks and have all the information needed for their registration. After assessing whether the desired commercial trademark is suitable for application or providing recommendations for trademarks that are not registerable, we submit a complete and acceptable application via the USPTO portal. We accurately define the class that directly corresponds to your field, provide a description of your products and/or services, and file your logo with the correct dimensions and, if necessary, suitable evidence through the portal.

If you have any questions regarding the trademark registration process or the requirement for legal representation during the application, please do not hesitate to contact us!