By: Gavin Strube, Esq.
In the 21st century, it is increasingly common for businesses to operate exclusively online. The global COVID pandemic only accelerated the pace at which new and existing companies transitioned to remote or digital workspaces. However, just as those companies need to adopt business solutions that meet their specific needs, they also need to ensure that their intellectual property portfolio is identified, managed, and protected. A significant part of that process is obtaining federal trademark registrations where appropriate.
First-time trademark applicants may hit a stumbling block when they must enter a domicile address for their business. If all aspects of a business are conducted virtually and there is no physical headquarter where its senior executives or officers ordinarily direct and control the business, how do you enter a domicile address? You can’t enter an address for your registered agent (although that is an acceptable mailing address), and since trademark applications are public records, putting your own address on the internet for all to see can (rightfully) concern individual corporate officers.
Until recently, the answer was simple. The applicant (or its attorney) would submit an explanation that lays out that precise scenario and the application would proceed as normal. Unfortunately, as of August 2023, the United States Patent and Trademark Office (“USPTO”) has revised its Examination Procedures . An explanation that the business is conducted entirely virtual is no longer sufficient, and a domicile address must be provided for a trademark application to proceed.
The USPTO’s rationale for this change is that accepting these statements sidesteps a statutory legal requirement for trademark applications. Therefore, it serves as a de facto petition to the Director of the USPTO without going through the proscribed steps for such a petition (or paying the filing fees). Now even an applicant that is a purely online business must provide a domicile address. In the case of companies with no true domicile, the USPTO will accept the name, title, and domicile address of an “individual with legal authority to bind the applicant” (usually an officer of the company).
This of course brings us back to legitimate privacy concerns. Posting the home address of a corporate officer eliminates one of the important protections offered by corporate entities – enhanced privacy for the operators of the company. Luckily, this information can be “masked” from public view in order to preserve privacy. This does require caution and experience. Trademark application, response, and maintenance forms can appear simple, but they are ultimately still complex legal documents. Putting the information in the wrong field or checking the wrong box can result in the corporate officer’s name and home address being publicly listed in the USPTO’s database. As we all know, information that gets on the internet stays on the internet, perhaps forever.
Additionally, this is not only a concern for new applicants. Any existing trademark registration that relied on an explanation that a business has no domicile will have to update the trademark registration with an appropriate address the next time a maintenance filing is due. Failure to do so will result in the cancellation of the trademark, which could have catastrophic consequences for your company’s branding and value.
This highlights the importance of working with trademark counsel to monitor, maintain, protect, and build your IP portfolio. Greenspoon Marder’s IP and Trademark team has decades of collective experience counseling clients and providing guidance regarding these important and valuable assets. Our team monitors legal, legislative, and regulatory developments that could have a profound impact on your intellectual property, and we are more than happy to counsel you regarding any questions you may have.
About Greenspoon Marder Greenspoon Marder LLP is a full-service law firm with over 225 attorneys and more than 20 office locations across the United States. With operations from Miami to New York and from Denver to Los Angeles, our firm attracts some of the nation’s top talent in key markets and innovation hubs. Our core practice areas include Real Estate, Litigation, and Transactional Services, complemented by the capabilities of a full-service firm. Greenspoon Marder has maintained a spot on The American Lawyer’s Am Law 200 as one of the top law firms in the U.S. since 2015, and our goal is to provide exceptional client service by developing a thorough understanding of each client’s business needs and objectives in order to provide strategic, cost-effective solutions.
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