Key points
- Since August 3, 2019, anyone whose domicile is outside the United States must be represented by a U.S.-licensed attorney to file and prosecute a U.S. trademark.
- The rule applies to applicants, registrants, and parties to Trademark Trial and Appeal Board (TTAB) proceedings.
- Every applicant must give the USPTO a domicile address: where you actually live, or where your company is actually run.
What the rule says
The USPTO's rule (37 C.F.R. § 2.11) requires trademark applicants, registrants, and parties to TTAB proceedings whose domicile is not in the United States or its territories to be represented by an attorney who is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or a U.S. territory.
The USPTO adopted the rule because of a surge of inaccurate and sometimes fraudulent filings from foreign applicants who filed without counsel. Requiring a U.S. attorney, who is subject to U.S. professional discipline, is meant to improve the accuracy of the trademark register.
The attorney must give the USPTO their bar information, including the state of admission and year admitted, and must confirm they are in good standing.
Who counts as "foreign-domiciled"?
The test is your domicile, not your citizenship or where you sell.
- Individuals: your domicile is your permanent legal place of residence.
- Companies: your domicile is your principal place of business, the headquarters where senior executives direct and control the business.
A company headquartered in London, Toronto, Shenzhen, or Berlin is foreign-domiciled even if it sells mainly to U.S. customers or has a U.S. warehouse. A U.S. subsidiary that is actually run from the United States may be U.S.-domiciled, but only if it is the true owner of the mark, which is a separate question worth getting right before you file.
The domicile address requirement
Every applicant, foreign or domestic, must give the USPTO a domicile address. It's a street address, and the USPTO generally rejects:
- P.O. boxes and mail-forwarding addresses
- A registered agent's address or "care of" addresses
- Virtual office addresses that aren't where the business is run
If your domicile and mailing addresses are different, the domicile address can be kept out of public view. Giving a false U.S. address to avoid the attorney rule can lead to sanctions and put the application or registration at risk.
Does the rule apply to Madrid Protocol filings?
You can designate the United States in an international application through your home trademark office without a U.S. attorney. But the USPTO examines the U.S. part of your international registration like any other application. If it issues an Office Action, a foreign-domiciled holder must appoint a U.S.-licensed attorney to respond. Read more in Madrid Protocol vs. Direct USPTO Filing.
The Canadian exception
Trademark attorneys and agents recognized by the USPTO who are registered in Canada may represent applicants located in Canada. Canadian businesses can therefore use either a recognized Canadian representative or a U.S.-licensed attorney.
What happens if you file without a U.S. attorney?
The USPTO will issue an Office Action requiring you to appoint a U.S.-licensed attorney. If you don't, the application is abandoned. Unauthorized filings and filings by "filing mills" that misuse attorney credentials can be terminated or sanctioned, which can also affect related applications.
How we help
Solace Law represents foreign-domiciled applicants and registrants as their U.S. attorney of record: preparing and filing applications, confirming domicile information, responding to Office Actions, and handling post-registration maintenance and TTAB matters. We work with clients remotely by email.
This guide is general information about U.S. trademark law, not legal advice, and reading it does not create an attorney-client relationship. Rules and fees change; contact us about your specific situation. We do not advise on foreign law.