Trademark Office Revises Guidance on U.S.-Based Attorney Rule

The U.S. Patent and Trademark Office has extensively revised guidance related to its requirement that non-U.S. residents use a U.S. attorney to secure and maintain a trademark.

The agency revised the guidance after “multiple requests for additional clarification” on the rule, PTO spokesman Paul Fucito said in an emailed statement.

“We want people to understand that the key to determining whether you need a U.S. lawyer or not is where you are domiciled,” Fucito said.

The office hopes the new rule barring foreign pro se applications, which took effect Aug. 3, will stem a flood of non-compliant trademark applications from abroad. Applications from China, in particular, have grown dramatically in recent years, according to PTO data. The rule mirrors similar requirements in various countries, according to the agency.

Much of the changes in the new guidance are related to verifying an applicant’s U.S. domicile, which must be the applicant’s residence or business address. Foreign residents, including U.S. citizens, need a U.S. attorney to apply for a trademark, while U.S. residents can still apply pro se, under the new guidance. American citizens abroad without a U.S. address also need an attorney.

The agency removed language that said “foreign citizens must comply with U.S. immigration laws” to claim a U.S. address. The new guidance says it may require documentation showing the applicant uses its U.S. address as a residence or business headquarters “under some circumstances,” such as if an address appears incorrect. Foreign citizens with a U.S. address are required to either add U.S. counsel or provide address documentation, the office said.

The PTO elaborated in its new guidance on what constitutes acceptable documentation, such as leases or mortgage agreements, insurance policies, or utility bills.

The August guidance had said examiners should require a foreign citizen with a U.S. address but no U.S. attorney to provide both “an explanation of the basis for claiming” a U.S. address and documentation. The PTO justified the requirements as necessary to determine whether a U.S. attorney is required.

The office also said that “the Trademark Act has long required that the ‘application shall include specification of the applicant’s domicile and citizenship.’” The attorney rule also applies to American citizens without a U.S. domicile. Post office boxes can’t function as a domicile, and the new version also excludes “care of” addresses, the agency said.

The office also added a protocol for notifying applicants of the need to correct invalid attorney bar information.