TMEP 610: Designation of Domestic Representative by Parties Not Domiciled in the United States

This is the October 2015 Edition of the TMEP

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610    Designation of Domestic Representative by Parties Not Domiciled in the United States

37 C.F.R. §2.24 Designation and revocation of domestic representative by foreign applicant.

  • (a)(1) If an applicant is not domiciled in the United States, the applicant may designate a domestic representative (i.e., a person residing in the United States on whom notices or process in proceedings affecting the mark may be served) by either:
  • (i) Setting forth the name and address of the domestic representative in the initial application; or
  • (ii) Filing a separate designation setting forth the name and address of the domestic representative, signed by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under §11.14 of this chapter.
  • (2) If the applicant does not file a document designating the name and address of a person residing in the United States on whom notices or process in proceedings affecting the mark may be served, or if the last person designated cannot be found at the address given in the designation, then notices or process in proceedings affecting the mark may be served on the Director.
  • (3) The mere designation of a domestic representative does not authorize the person designated to represent the applicant unless qualified under §11.14 of this chapter.
  • (b) A request to change or revoke a designation of domestic representative must be signed by the applicant, someone with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under §11.14 of this chapter.

37 C.F.R. §2.193(e)(8) Designations and revocations of domestic representative.

A designation or revocation of a domestic representative must be signed by the applicant or registrant, someone with legal authority to bind the applicant or registrant (e.g., a corporate officer or general partner of a partnership), or a practitioner qualified to practice under §11.14 of this chapter. In the case of joint applicants or registrants, all must sign.

Designation of Domestic Representative Encouraged. An applicant, registrant, or party to a proceeding before the USPTO who is not domiciled in the United States may file a document designating the name and address of a domestic representative on whom may be served notices or process in proceedings affecting the mark. 15 U.S.C. §§1051(e), 1058(f), 1059(c), 1060(b), and 1141h(d). The USPTO encourages parties who do not reside in the United States to designate domestic representatives, but it is not mandatory. If the applicant, registrant, or party does not designate a domestic representative, the USPTO will not require a designation.

May be Natural or Juristic Person. The person designated as a domestic representative may be a natural person or a juristic person as defined in 15 U.S.C. §1127.

Not the Same as Power of Attorney. The designation of a domestic representative is not the same as a power of attorney. The designation serves a different purpose, namely, to provide a contact and address for service of process. The mere designation of a domestic representative does not authorize the person designated to practice before the USPTO (e.g., to prepare or prosecute the application, or represent a party in a proceeding before the USPTO). 37 C.F.R. §§2.24(a)(3) and 11.5(b)(2). Similarly, a power of attorney does not serve as a designation of a domestic representative, unless the power of attorney specifically states that the attorney is also the domestic representative on whom may be served notices or process in proceedings affecting the mark.

Requirements. A designation of domestic representative must include the name and address of the person designated and a clear statement that the party intends to designate this person as a domestic representative upon whom notices or process affecting the mark may be served. 37 C.F.R. §2.24(a)(1).

Signature. The designation must be in writing. If set forth in the initial application, a designation of domestic representative may be signed by a person properly authorized to sign the application on behalf of applicant. A person who is properly authorized to sign an application is:

  • (1) A person with legal authority to bind the applicant (e.g., a corporate officer or general partner of a partnership);
  • (2) A person with firsthand knowledge of the facts and actual or implied authority to act on behalf of the applicant or party; or
  • (3) An attorney as defined in 37 C.F.R. §11.1 who has an actual written or verbal power of attorney or an implied power of attorney from the applicant or party.

37 C.F.R. §§2.193(e)(1)–2.193(e)(1)(iii); TMEP §804.04.

If filed apart from the initial application, the designation must be signed by the individual applicant or registrant, someone with legal authority to bind a juristic applicant or registrant (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. In the case of joint applicants or registrants who are not represented by a qualified practitioner, all must sign. 37 C.F.R. §§2.24(b) and 2.193(e)(8).

Duration. An appointment of domestic representative remains in effect unless specifically revoked or supplanted by appointment of a new domestic representative.

Revocation. An applicant or registrant may revoke a designation of domestic representative. A revocation must be signed by the individual applicant or registrant, someone with legal authority to bind a juristic applicant or registrant, or a qualified practitioner. In the case of joint applicants or registrants who are not represented by a qualified practitioner, all must sign. 37 C.F.R. §§2.24(b) and 2.193(e)(8).

Withdrawal. A domestic representative may withdraw, in a written document signed by an individual domestic representative, or by someone legally authorized to bind a juristic domestic representative.

Form. To expedite processing, the USPTO recommends that designations and revocations of domestic representative be filed through TEAS, at http://www.uspto.gov.

See TMEP §609.04 regarding correspondence with parties who are not domiciled in the United States.