Owners of U.S. trademark registrations issued in 2018 or 2019 will be facing an initial maintenance filing deadline this year (either a Section 8 or Section 71 Declaration of Use), and will need to take note of a new rule that came into effect August 3, 2019.
As part of the filing process, the U.S. Patent and Trademark Office (USPTO) requires owners to provide a current domicile address – defined as the permanent legal residence for individuals or the principal place of business for entities – to determine whether U.S. counsel is required under the August 3, 2019 rule. The domicile requirement applies even if the underlying application was filed or the registration issued prior to August 3, 2019.
As to the domicile address, the USPTO requires a true physical street address – not a P.O. Box, virtual office, co-working space, or mail drop. The USPTO now scrutinizes and searches questionable addresses, to confirm that an address is a legitimate physical location. Listing anything other than where the business is actually located will likely trigger an Office Action and, if not corrected promptly, this could put your registration at risk. Because Section 8 filings are subject to a statutory deadline – missing the final deadline or the deadline for responding to a related Post-Registration Office Action – even inadvertently – will result in cancellation of the registration. The only remedy at that point is to start over with a new application.
Don’t let a simple address oversight cost you your trademark—stay vigilant and file on time.
