Understanding the USPTO’s Domicile Address Requirement for Trademark Filings

When filing a U.S. trademark application or maintaining an existing registration, applicants and owners must meet specific identification requirements.  One requirement that is a subtle trap for novice filers is the domicile address requirement.  Examiners are trained to search and review this requirement, and they issue rejections on it all the time.

Requirements of the Domicile Address Rule

The United States Patent and Trademark Office (“USPTO”) requires all trademark applicants, registrants, and parties to proceedings to provide a domicile address as part of their application or post-registration filings.  This requirement was put in place in the 2019-2021 time frame, if I remember.  It was one rule created to fight the influx of fake trademark applications being filed at the USPTO, primarily by foreign-based applicants.  The Office put other rules to fight trademark fraud in place as well.

The rule (37 CFR 2.189) requires that an applicant identify their “domicile address” – their principal place of business, so that an Examiner can verify identity and determine legal representation requirements.  With this information, the Examiner can try to determine whether an applicant is based inside the US or outside the US; applicants based outside the US must be represented by an attorney inside the US.

For corporate trademark applicants, this requirement is fairly vanilla.  Most companies have an office, a factory, a warehouse, or some physical location where they do business and receive mail.

For an individual, however, the domicile address is usually their home address.  And most people don’t want to put their home address into the USPTO, because it will immediately become public and searchable.  Not only will the individual receive illegitimate solicitations at their home like scam trademark maintenance mailers, but they will also receive legitimate solicitations, too, usually from law firms and attorneys trying to get their business.

For privacy, individuals – and some corporations like small or one-person companies – often get a P.O. Box, or a virtual office, or a many-mailboxes-on-the-wall type service to receive their mail without disclosure of their home address.  Unfortunately, that often leads to a rejection.  These rejections will lead to abandonment of the entire trademark application unless corrected.

The Trademark Office separates domicile addresses from mailing addresses.  It allows you to enter a P.O. Box-style address as a domicile address only if you also enter a mailing address.  The mailing address has to be a “real” address – meaning a door with a person presumably sitting somewhere behind the door.  You can then make a request that the mailing address be kept private (though the Trademark Office has inadvertently leaked those addresses in the past).

 

Many applicants worry that providing a domicile address will expose sensitive personal or business location details to the public. Fortunately, the USPTO separates domicile addresses from mailing addresses in its filing forms. You can provide a valid mailing address for public records while keeping the domicile address confidential within the USPTO’s internal system.

Why the USPTO Adopted the Rule

The USPTO first implemented the requirement in 2019 to address the growing problem of inaccurate and potentially fraudulent trademark filings, particularly from foreign parties.  By requiring a verified physical address, the Office aims to ensure that applicants and owners can be properly identified and, where necessary, appropriately represented by qualified counsel.

For foreign-domiciled applicants and registrants, the address plays an additional role: the USPTO uses it to determine whether they must be represented by a U.S.-licensed attorney in all trademark matters.  If an applicant’s principal place of residence or business lies outside the United States, the rules mandate that a U.S. attorney of record handle official filings and communications.  I have received more calls in the past few years asking if I can represented a foreign applicant, likely because the USPTO put this rule in place.  When I get these inquiries, I carefully consider them, because in some ways, the USPTO is trying to shift the verification work from its shoulders to the attorney’s – I’m part of the process for helping prevent fraud at the Trademark Office.

Working from Home, Security Concerns, and “No Fixed Physical Address”

The rise of remote work and home-based businesses has brought new challenges to this requirement.  Many modern enterprises operate without a traditional commercial address, instead relying on home offices, co-working spaces, or digital platforms.  The USPTO updated its guidance to reflect these realities, particularly through Examination Guide 3-23 issued in August 2023.

If a trademark owner genuinely lacks a fixed physical address, the Office allows limited alternatives, but only in narrow circumstances.  Individuals must provide a real residential address, and entities without a principal place of business must supply either a physical address that meets the criteria or the name, title, and address of an authorized person associated with the entity.  If none of these options exists, the party may file a petition to waive the requirement by explaining the absence of a fixed address.

In some cases, the applicant may have a more serious privacy concern.  Celebrities, people in the public eye, judges, stalking victims, and others may have a very legitimate need to not have their address made public.  In these situations, there is a special petition that can be filed with the Director of the Trademark Office to have the address kept under seal.

Practical Tips for Trademark Filers

Here are some takeaways that might help you avoid delays or office actions related to the domicile address requirement.  As I noted above, the Office issues these rejections all the time and they can lead to abandonment of your trademark application.  If you are at all in doubt about your application, please contact a local competent trademark attorney for assistance.

• Do not use P.O. Boxes, care-of addresses, virtual offices, or a registered agent addresses as your domicile address.  These do not qualify and will likely trigger an office action refusal of your trademark application.
• Review your filings before submission to ensure your domicile address aligns with USPTO standards.
• If your domicile address is unacceptable, submit a mailing address with a privacy request.
• If you are a foreign trademark applicant, remember that providing meeting the domicile address requirement is not enough; if your domicile address is outside the US, this will trigger the requirement to have a U.S. attorney represent in trademark matters.  Feel free to contact me to discuss help you may need on this front.

Final Thoughts

The USPTO’s domicile address requirement reflects the Office’s objective to improve transparency and reduce fraudulent activity in the trademark system.  While it has done this to some extent, it has also created a trap for novice filers and applicants filing on their own.  Again, I see these rejections all the time.  Understanding and complying with the rule ensures smoother prosecution and fewer administrative obstacles.  If you have questions about how the domicile address requirement applies to your situation or how to respond to an office action on this issue, feel free to contact me, Phoenix trademark lawyer Tom Galvani at 602-281-6481, or connect with trademark counsel near you.