On February 13, 2024, the Federal Circuit issued its ruling in the case In re Chestek (linked here), which upholds the Trademark Office’s rule requiring trademark applicants and owners to provide a proper domicile address. The applicant in that case provided a post office box address (P.O. box) as its domicile address, which was rejected by the USPTO. Since the applicant failed to provide a proper domicile address, registration of the applied-for mark was refused. In its ruling, the Federal Circuit dismissed the applicant’s claims that the rule violates privacy and other concerns, such as its impact on domestic violence victims or homeless individuals. In essence, the Federal Circuit’s ruling confirms that trademark applicants and owners must provide a proper domicile address to obtain and maintain a trademark registration in the U.S.
The U.S. Patent and Trademark Office (“USPTO”) requires all trademark applicants and owners to disclose their domicile address—whether within the United States, or elsewhere. This is known as the “domicile address requirement.” The policy was implemented in part to combat fraudulent foreign filings that use fake addresses or shell companies to hide the true owners’ identity. Providing a proper domicile address also allows the USPTO to determine whether the applicant or owner must be represented by a qualified U.S. attorney. However, requiring a domicile address can present unique issues for trademark owners in today’s modern world of remote workplaces and virtual business enterprises.
This article will highlight the updated guidance provided by the USPTO regarding the domicile address requirement and provide an overview of possible response options for trademark owners.
In August 2023, the USPTO issued Examination Guide 3-23, which provides updated guidance for trademark applicants and owners when faced with issues involving the domicile address requirement.
Most importantly, the guidance addresses how to respond to a Trademark Office inquiry when an applicant or owner has no fixed physical address. Trademark owners no longer have the option to provide a detailed explanation as to why the owner has “no fixed physical address” in response to the inquiry. Instead, the updated guidance recommends that—in these cases—the owner must either provide an acceptable domicile address or file a petition to waive the domicile address requirement.
Domicile Address Requirement
A request for an acceptable domicile address usually comes up during review of an initial trademark application or upon receipt of post-registration maintenance filings. The examiner will issue a requirement through an Office Action requesting that the trademark owner provide an acceptable domicile address. The owner must then provide either:
- An acceptable domicile address; or
- Arguments or evidence as to why the address previously provided complies with the domicile address requirement.
What Qualifies as an Acceptable Domicile Address?
According to the USPTO, addresses that do not identify an actual street address or that function only as a mail-forwarding address are considered unacceptable as a domicile address. Rather, an acceptable domicile address for:
- An individual person identifies the location of the place where the person resides and that is intended to be the person’s principal home.
- A corporate entity identifies the location of the entity’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities.
For example, the following is a list of addresses that would not qualify as an acceptable domicile address:
- Post office (P.O.) boxes.
- “Care of” (c/o) addresses.
- Private mailboxes (PMB), or commercial mail receiving agency (CMRA) addresses where a customer rents a PMB (e.g., FedEx, The UPS Store).
- Registered agent (RA) addresses.
- Army Post Office (APO), Fleet Post Office (FPO), Diplomatic Post Office (DPO), and Highway Contract Route (HCR or HC) addresses.
This is important to know, especially when the trademark owner is a corporate entity, because certain states allow for a registered agent’s address to serve as the entity’s “business address” or do not verify whether the “business address” reported to the state is the entity’s actual principal place of business. In these situations, a P.O. box address or registered agent address would not satisfy the USPTO’s domicile address requirement.
What If the Trademark Owner Has “No Fixed Physical Address”?
The updated guidance provides limited response options for trademark owners who assert that they have “no fixed physical address.” This may be the case, for instance, when an owner operates its business entirely remotely. The options differ slightly depending on whether the trademark owner is an individual or a corporate entity:
- For an individual: They must provide an acceptable domicile address, such as when they have subsequently obtained a permanent legal place of residence at a fixed physical address.
- For a corporate entity: The entity must provide either:
- (1) An acceptable domicile address, such as when the entity subsequently obtains a fixed physical address that serves as its principal place of business (e.g., opening a brick-and-mortar storefront); or
- (2) The full name, title, and acceptable domicile address of a person with legal authority to bind the entity (e.g., an officer, partner, director, or manager).
If the trademark owner cannot satisfy the requirement, the owner may file a petition to the Director of the USPTO to waive the domicile address requirement. The petition must include a verified statement of facts explaining that the owner does not have a fixed physical address for their permanent legal place of residence or principal place of business, respectively. The owner must also file a separate response to the Office Action to avoid abandonment of the application.
Under any scenario, the USPTO has implemented safeguards allowing trademark owners to effectively “hide” or “mask” their domicile address from public view. For example, the trademark applicant or owner should include their domicile address in the “Domicile Address” field of the electronic application or response form, as applicable, to keep it hidden from public view. The trademark owner can then list their personal or business mailing address (which may include an otherwise unacceptable “domicile address,” such as a P.O. box, registered agent address, or commercial mail receiving agency address) in the “Mailing Address” field to be shown as part of the public Trademark Office records.
Currently, there is a case before the Federal Circuit, which seeks to challenge the domicile address requirement on privacy grounds (see In re Chestek, PLLC, No. 22-843). The Federal Circuit heard oral arguments in December 2023, and the matter remains pending. Depending on the outcome, there may be future changes to the USPTO’s domicile address requirement. We will provide further updates to our clients as we receive them.