The Lanham Act requires the United States Patent and Trademark Office (“USPTO”) to collect the domicile information of all trademark applicants. This provides the evidence necessary to show the applicant is a real person or corporation domiciled in the United States or has authorized, licensed, U.S. representation.
On August 30, 2023, the USPTO issued a Bulletin containing an 8-page examination guide that clarifies the necessary steps attorneys and examiners will follow to evaluate the domicile information of both trademark applicants and owners. The guide offers in-depth guidance, and importantly notes “[a]ddresses that do not identify an actual street address or that function as a mail-forwarding address are presumptively unacceptable as domicile addresses.”
Notably, these presumptively unacceptable addresses include common entities such as post office (P.O. boxes) and “care of” (c/o) addresses. However, the USPTO does accept P.O. box addresses for U.S. government entities and federally recognized American Indican and Alaska Native tribes. Additionally, a detailed explanation that the applicant or registrant has “no fixed physical address” is no longer sufficient to satisfy the domicile address requirement. The USPTO provides two reasons for this change. Trademark counsel can change over time, sometimes multiple times over the lifetime of a trademark. A domicile address assists the USPTO in determining if the trademark owners need a new attorney licensed in the United States after they drop or change their original representation. Additionally, the USPTO stated “the domicile address requirement is crucial to our efforts to fight the unprecedented increase in trademark filing scams we’ve experienced over the last few years, primarily originating overseas.” USPTO trademark enforcement teams have uncovered thousands of examples of foreign applicants using fake United States addresses in applications or using the credentials of United States attorneys without the attorney’s knowledge or permission.
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