In an effort to crack down on fraudulent trademark filings, the United States Patent and Trademark Office (USPTO) will be collecting and verifying domicile addresses for all applicants.
This comes as a result of the USPTO’s trademark enforcement team finding thousands of foreign applicants using fake U.S. addresses or fraudulently using the address of a U.S. attorney without the attorney’s knowledge or permission. In the course of this investigation, more than 18,000 trademarks have been terminated for invalid applications, and more than 3,200 registrations have been sanctioned.
To make it clear to all applicants what is an acceptable address and what is not, the USPTO has published an examination guide that identifies the steps that examining attorneys and post-registration examiners will follow to determine if an address is valid for use in a trademark application.
The examination guide makes it clear that red flags will be attached to applications that do not identify an actual street address, but instead use a P.O. box, “care of” (c/o) addresses, commercial mail receiving agency (CMRA) addresses, registered agent (RA) addresses, private mailboxes (PMB), Army Post Office, Fleet Post Office, diplomatic post offices and highway contract route addresses. The USPTO claims these addresses “generally may not serve as domicile addresses because they do not identify the location of the place the person resides and that is intended to be the person’s principal home (for a natural person) or the location of a juristic entity’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities.”
Foreign entities that apply for a trademark must have a qualified U.S.-licensed attorney to represent them or the USPTO will issue an office action requiring the foreign entity to hire a qualified U.S. attorney and provide supporting documentation that the US street address is valid.
The USPTO recognizes that trademark counsel can change multiple times over the life of a trademark, and states that the domicile address can help the examiners determine if a new US-licensed trademark attorney is required. The Exam Guide can be found here: https://tinyurl.com/4j2wb7t2
If you have any questions or concerns about protecting your intellectual property under copyright law, an attorney at Ference and Associates, LLC, will be happy to help. Please contact us by phone at (412) 741-8400, or email at contact@ferencelaw.com.