Over the summer, the United States Patent and Trademark Office (USPTO) amended Trademark Rule 2.11 requiring foreign applicants, registrants, or parties to any trademark proceeding to be represented by a U.S. attorney. You know you’re a foreign applicant if you have no domicile in the U.S.
The question, then, becomes what is a domicile?
The legal definition of “domicile” for a natural person is “the permanent legal place of residence.” For a business, the domicile is its principal place of business—the entity’s headquarters where the entity’s senior executives or offices ordinarily direct and control the entity’s activities and is usually the center from where other locations are controlled. (37 C.F.R. § 2.2(p). A post office box cannot be a domicile in the U.S.
Foreign citizens or entities must be in full compliance with U.S. immigration laws. If claiming a U.S. domicile, they must also provide three things: (1) the basis for claiming the U.S. address, (2) documents showing the address as a residence or headquarters, and (3) the appointment of U.S. counsel if the domicile is outside the U.S.
If you, as a foreign individual or company, appoint a U.S. attorney for your trademark concerns, then you need not maintain a U.S. domicile. However, if you claim to be in the U.S., then you must prove that as described above, regardless of whether you appoint a U.S. attorney.
In short, any foreign citizen or entity wishing to file a trademark in the U.S. will likely fall short in establishing a token presence just to avoid appointing a U.S. attorney. In the long run, it will be quicker and easier to appoint the U.S. attorney, establishing a U.S. domicile only if and when it makes business sense.