TMEP 501.04: Foreign Assignee May Designate Domestic Representative

This is the October 2015 Edition of the TMEP

Previous: §501.03 | Next: §501.05

501.04    Foreign Assignee May Designate Domestic Representative

15 U.S.C. §1060(b)  

An assignee not domiciled in the United States may designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark. Such notices or process may be served upon the person so designated by leaving with that person or mailing to that person a copy thereof at the address specified in the last designation so filed. If the person so designated cannot be found at the address given in the last designation, or if the assignee does not designate by a document filed in the United States Patent and Trademark Office the name and address of a person resident in the United States on whom may be served notices or process in proceedings affecting the mark, such notices or process may be served upon the Director.

37 C.F.R. §3.61

If the assignee of a patent, patent application, trademark application or trademark registration is not domiciled in the United States, the assignee may designate a domestic representative in a document filed in the United States Patent and Trademark Office. The designation should state the name and address of a person residing within the United States on whom may be served process or notice of proceedings affecting the application, patent or registration or rights thereunder.

An assignee not domiciled in the United States may designate, by a document filed with the USPTO, the name and address of a domestic representative. 15 U.S.C. §§1051(e), 1058(f), 1059(c), and 1060(b); 37 C.F.R. §3.61; TMEP §610. The USPTO encourages assignees who do not reside in the United States to designate domestic representatives.

When an assignee designates a domestic representative, the designation should be in a document separate from the assignment document. One copy of the designation of domestic representative should be sent to the Assignment Recordation Branch with the document to be recorded. In addition, the assignee should send a separate copy of the designation to the Trademark Branch of the USPTO (“Trademark Operation”) for each registration or application to which an assignment pertains, so that a copy of the designation can be entered in each official record that is identified in the assignment document. 37 C.F.R. §2.193(g).