Trademark applicants and registrants in the U.S. are required to provide a street address or mail forwarding address to the U.S. Patent and Trademark Office USPTO.
P.O., c/o, CMRA, RA, PMB, APO, FPO, DPO, HCR, HC, virtual workspace, and shared office addresses are unacceptable. If such an address is provided, the USPTO will issue an Office Action requiring a street or mail forwarding address.
The USPTO issued an Examination Guide yesterday on this topic.
If an applicant or registrant is a foreign individual or entity with a U.S. street address and they are not represented by U.S. counsel, the USPTO will require that they appoint U.S. counsel.
If an applicant or registrant provides a new domicile address in response to an Office Action, the Examining Attorney should conduct an internet search to determine whether it is acceptable. The Examining Attorney can issue a new Non-Final Office Action or a Final Office Action if necessary.
The domicile address must be for an individual or entity who has legal authority to bind the applicant or registrant.
If the applicant or registrant asserts they have no fixed physical address, they must file a petition to the Director of the USPTO.
Any published application or maintained/accepted registration asserting "no fixed physical address" before the issuance of this Examination Guide does not need to be retracted. HOWEVER, companion applications or registrations that have not reached this stage will be evaluated under this Examination Guide.
The USPTO stated in the press release for this Examination Guide that it is required by the U.S. Trademark Act to collect domicile information to confirm that an applicant or registrant is real or requires a U.S.-licensed attorney, and to have valid contact information for the trademark owner.
In addition, the justification for this information is to defend against the unprecedented increase in trademark filing scams that originate overseas.
The USPTO has discovered thousands of examples of foreign applicants using fake U.S. addresses in applications or hijacking the credentials of U.S. attorneys and using their address without the attorney's knowledge or permission.
Since 2019, the USPTO has issued 258 final Orders for Sanctions for violations of the U.S. counsel rule that terminated 18,789 invalidly filed applications and sanctioned 3,297 registrations.
Originally Published by 31 August 2023
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