USPTO Issues Examination Guide 3-23: "Examination Procedures for Reviewing Domicile Addresses"

The USPTO has issued Examination Guide 3-23 (pdf here) to provide further guidance regarding domicile addresses in trademark applications.

The United States Patent and Trademark Office (USPTO) has issued an examination guide that clarifies the steps examining attorneys and post-registration examiners will follow to evaluate trademark applicants’ and owners’ domicile information. 

The USPTO is required by the Lanham Act to collect applicants’ domicile information, which serves as confirmation that the applicant is a real or juristic person (such as a corporation) domiciled in the U.S. or with authorized, U.S.-licensed representation (as required under “the U.S. Counsel Rule”). Trademark counsel can change multiple times over the lifetime of a trademark, and a domicile address helps us determine if trademark owners need a new U.S.-licensed attorney after they change or drop their current representation. 

Moreover, 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. Our trademark enforcement teams have 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, we’ve 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.

The exam guide explains this requirement in more detail and outlines ways applicants and owners can respond to the requirement.

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Text Copyright John L. Welch 2023.