As part of its ongoing efforts to improve and maintain the accuracy of the Trademark Register, and combat trademark scams and bot-filed trademark applications, the USPTO has revised examination procedures for reviewing domicile addresses in applications and at post-registration, detailed in a new Examination Guide. We highlight a few of the requirements and changes below.
Under the Lanham Act and §803.05(a) of the TMEP, Applicants must provide the USPTO with the address of their domicile and update the address if it (or the owner of the application/registration) changes. The domicile address to be included is dictated by whether the applicant/registrant is an individual, in which case the address is the principal residence of the individual, or an entity, in which case it is the entity’s principal place of business.
Actual Domicile Street Address: Addresses must identify an actual street address; designations such as c/o, PO Box, PMB, APO are unacceptable. Take heed – using sneaky maneuvers to avoid listing the actual domicile address could result in at least an initial Office Action. The USPTO employs forensic software and other tools to quickly identify street addresses that are clearly not domicile addresses, e.g., street address that are actually for postal offices or other commercial mail establishments with postal boxes.
No Fixed Physical Address? Need to Have Requirement Waived?: If an applicant has no fixed physical address, it is no longer sufficient for applicants/owners to indicate this in the domicile field. Instead, the applicant must file a petition to the Director of the USPTO explaining why there is no fixed physical address. Similarly, if applicants/registrants have an extraordinary reason for not providing the domicile address, e.g., a safety concern, and wish to have the domicile address requirement waived, this request must also be submitted via a petition to the Director. Even if a petition has been filed, if an Office Action issues requiring the address be added/corrected, a response must be filed to avoid abandonment of the application.
Domicile Address Cannot Be Entered by Examiner’s Amendment: Examining Attorneys are no longer permitted to enter domicile addresses or changes via Examiner’s Amendment. In addition, the USPTO can issue final Office Actions if the requirement is not satisfied.
This article appeared in the August 2023 issue of MarkIt to Market®. To view our past issues, as well as other firm newsletters, please click here.