Owners with a Non-U.S. Domicile

Examination and post-registration

.

If a submission lists a foreign address (i.e., any street address that is located

outside of the United States and its territories) as the applicant’s or registrant’s

domicile, and the applicant or registrant is not represented by a qualified U.S.

attorney, the examining attorney or post-registration examiner will issue an Office

action that requires the applicant or registrant to appoint a qualified U.S. attorney

as its representative and to provide that attorney’s bar information. The Office

action will also include any other applicable refusals and/or requirements.

Section 66(a) applications

. The

requirement for a foreign-domiciled applicant to appoint a qualified U.S. attorney is

not a filing-date requirement for an initial §66(a) application because these are

transmitted to the USPTO by the International Bureau (IB) and generally do not

include an appointment of an attorney authorized to practice before the USPTO. If an

Office action must issue for other refusals and/or requirements, the examining

attorney will require the applicant to appoint a qualified U.S. attorney as its

representative and to provide that attorney’s bar information. See

TMEP §714.05

regarding the deadline within

which all refusals and/or requirements must be notified to the IB. If, however, a

§66(a) application is otherwise in condition for approval for publication upon first

action, the examining attorney may approve the application for publication and should

not require the applicant to appoint an attorney authorized to practice before the

USPTO or to provide an email address. See

TMEP

§803.05(b)

regarding applicant’s email address as a

required element of an application.

If the applicant responds, but does not appoint a

qualified U.S. attorney, the examining attorney will issue a final action as to the

requirement to appoint such an attorney and all other unresolved refusals and/or

requirements, if the file is otherwise in condition for a final action

an email address. See

TMEP

§803.05(b)

regarding applicant’s email address as a

required element of an application.

If the applicant responds, but does not appoint a

qualified U.S. attorney, the examining attorney will issue a final action as to the

requirement to appoint such an attorney and all other unresolved refusals and/or

requirements, if the file is otherwise in condition for a final action. If the

registrant responds in a post-registration matter, but does not appoint a qualified

U.S. attorney, the post- registration specialist will issue a second action

maintaining the requirement to appoint such an attorney and maintaining all prior

unresolved refusals and/or requirements.

If the applicant or registrant responds by appointing a

qualified U.S. attorney, the examining attorney or post-registration examiner will

withdraw the requirement to appoint such an attorney. If the applicant or registrant

responds by amending to an acceptable U.S. street address, but does not appoint a

qualified U.S. attorney, the USPTO will follow the procedures in

TMEP §601.01(b)

. If the applicant or

registrant responds by amending its domicile address to a presumptively unacceptable

type of domicile address, such as an address that does not identify an actual street

address or that functions as a mail forwarding address, the USPTO will follow the

procedures in

TMEP §601.01(c)

.

If the examining attorney or post-registration

examiner issues an Office action that (1) maintains only a requirement to appoint a

qualified U.S. attorney and/or for additional information under

37 C.F.R. §2.11(a)

,

(b)

, and/or

(c)

, or (2) maintains only the requirement for

an insufficient information fee under

37 C.F.R. §2.22(b)

in addition to one or all of

the requirements under

37 C.F.R. §2.11(a)

,

(b)

, and/or

torney or post-registration

examiner issues an Office action that (1) maintains only a requirement to appoint a

qualified U.S. attorney and/or for additional information under

37 C.F.R. §2.11(a)

,

(b)

, and/or

(c)

, or (2) maintains only the requirement for

an insufficient information fee under

37 C.F.R. §2.22(b)

in addition to one or all of

the requirements under

37 C.F.R. §2.11(a)

,

(b)

, and/or

(c)

, an applicant or registrant may only seek

review of the requirement(s) by filing a petition to the Director under

37 C.F.R. §2.146

.

37 C.F.R.

§§2.11(f)

,

2.165

,

2.186

,

7.40

.

Further, if it is clear that the applicant or

registrant is foreign-domiciled and has not appointed a qualified U.S. attorney to

represent it, then amendments to the application or registration are not authorized

and may not be entered. If it is not clear whether the applicant or registrant is

foreign-domiciled, and the examining attorney or post-registration examiner must

issue the requirements regarding domicile and to appoint a qualified U.S. attorney,

then amendments to the application or registration are not authorized and may not be

entered until the applicant or registrant establishes that its domicile is in the

United States. For example, the examining attorney may not contact an applicant to

authorize an examiner’s amendment or to issue a priority action in this situation.

Petitions, requests for reinstatement, and

post-publication amendments

. If the USPTO receives a petition to the

Director, a request for reinstatement, or a post-publication amendment filed by a

foreign domiciliary, an attorney or paralegal in the Office of the Deputy

Commissioner for Trademark Examination Policy will notify the filer that appointment

of a qualified U.S. attorney is required and of any other deficiencies. The applicant

or registrant will be granted additional time to appoint a qualified U.S. attorney

and to supplement the petition or request for reinstatement, as appropriate. If the

applicant or registrant does not appoint a qualified U.S

eputy

Commissioner for Trademark Examination Policy will notify the filer that appointment

of a qualified U.S. attorney is required and of any other deficiencies. The applicant

or registrant will be granted additional time to appoint a qualified U.S. attorney

and to supplement the petition or request for reinstatement, as appropriate. If the

applicant or registrant does not appoint a qualified U.S. attorney and submit any

additional necessary information within the time allowed, the petition or request for

reinstatement will be denied or the amendment will not be entered. Filing a petition

does not extend the time for responding to an outstanding Office action or other

statutory deadline.

TTAB proceedings

. The TTAB will

suspend proceedings when requiring a foreign-domiciled party to appoint a qualified

U.S. attorney to represent it and inform the party of the time frame within which it

must appoint such an attorney.

TBMP §114.01

.