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Wednesday Aug 30, 2023

How the domicile address requirement advances our trademark anti-fraud efforts

Guest blog by Dave Gooder, Commissioner for Trademarks

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Director Kathi Vidal and Commissioner for Trademarks Dave Gooder speak to stakeholders at the International Trademark Association meeting

We recently issued an examination guide to clarify the steps examining attorneys must take to evaluate the validity of a trademark applicant’s “domicile” as included in their application. This requirement is also a key part of our comprehensive effort to fight trademark filing fraud. In this blog, we offer a little more about what it is, why it’s so important, and what you can do to help. 

First, a little background: The Lanham Act requires us to collect an applicant’s domicile information, and we do so via their domicile address. An applicant’s domicile address depends on whether they are a natural person or an entity (such as a corporation). For an individual, domicile means the place where the person resides and intends as their principal home. For a juristic person, e.g., a corporation or partnership, domicile means the principal place of business where the senior executives or officers ordinarily direct and control the activities of the business. Prior to 2019, USPTO presumed that the applicant’s listed address was the applicant’s domicile and we did not refuse customers who provided PO boxes.

In 2019, to better combat the rapidly rising number of trademark scams that were impacting both our customers and us, and to improve accountability for the accuracy of information provided in applications, we issued notice and comment rulemaking and subsequently began requiring trademark applicants and registrants based overseas to be represented by a U.S.-licensed attorney (also known as the “U.S. Counsel Rule”). At that time, due to our need to enforce the U.S. Counsel Rule and the heightened risk of its abuse, we began requiring a street address for the domicile address. 

In a world where bots and anyone or anything can file a trademark application, the U.S. Counsel Rule helps us determine whether or not the applicant is indeed a real person who either lives or has authorized representation in the United States. It also helps us know if an applicant needs to appoint a new attorney if they decide to change counsel.

Unfortunately, the U.S. Counsel Rule has not stopped some determined scammers who seek to evade the requirement for domicile. Since 2019, we’ve issued 258 final orders for sanctions for violations of the U.S. Counsel Rule that terminated 18,789 invalidly filed applications and sanctioned 3,297 registrations. This includes thousands of incidents where foreign applicants have used the same false U.S. address to avoid having to hire a U.S.-licensed attorney, or where they appear to have hijacked U.S. attorney credentials and added those credentials without the attorney’s awareness or permission to applications in order to create the appearance that they have hired U.S. counsel.

Our review of suspicious submissions has even revealed U.S.-licensed attorneys cooperating with foreign filing mills who are filing applications that violate USPTO Rules of Practice, including the rules on signatures and certifications, and the Rules of Professional Conduct. A domicile address is crucial to combatting these scams.

Importantly, if an individual feels like their personal safety is at risk if the domicile address appeared in publicly viewable fields, we provide them the option to redact the domicile address by filing a Petition to the Director. Additionally, we are committing new resources and teams to strengthen and uphold the integrity of our IT systems.

The significant and dangerous problems posed by trademark scams and application fraud should serve as a clarion call to our entire trademark community. That’s why we ask for all those in the community to consider ways they can support these efforts. We welcome all ideas at, and we look forward to even more opportunities to hear from you on this and other important anti-fraud initiatives.

We are humbled and honored to serve this incredible community that is driving our nation’s economy through the development of new brands and the business growth that is fueled by strong trademarks.  We are grateful for your support. 


The "where you sleep at night" requirement does NOTHING to help with fraudulent TM applications. The PTO no longer sends any kind of correspondence by physical mail, so the scammer can just select a real US address. The only parties that are hurt are legitimate applications that either do not have a physical address (because the company is virtual) or who wish to keep their real address private for any number of reasons (and of course the PTO's absolutely abysmal failure to safeguard supposedly hidden addresses for YEARS means that the PTO's promises of confidentiality are worthless). All of this after-the-fact backing and filling seems particularly disingenuous given this requirement has been challenged in court (and the PTO's supposed privacy protections proved worthless for tens of thousands of applicants).

Posted by Kevin Grierson on August 30, 2023 at 01:03 PM EDT #

A dedicated TM bar would easily eliminate scammers from misappropriating attorney identities if you combine it with a customer number or other licensing. Already the E&O insurance industry is eliminating attorneys who dabble in TM law (one or two filings annually), so the ones who file regularly are actually TM specialists and would be a good base for this dedicated bar. Limiting TM prosecution to these attorneys or to true pro se applicants (who are not using third party "DIY" companies, where I see abuse), would reduce fraud and improve the TM registration experience.

Posted by Karen on August 30, 2023 at 01:49 PM EDT #

Might I suggest simply working towards the root cause of why these applications are being filed? Outside of the true "scams," the mass filing is done due to Amazon Brand Registry. Dealing with that organization (who has a seat on TPAC) may be the best way to fix the problem.

Posted by Emil Ali on August 30, 2023 at 03:30 PM EDT #

What about people in the US who do not have a regular place of residence? There are now hundreds of thousands of people in the US who do not have a residence and who may apply for trademarks. The closest thing many people have to a steady residence is a USPS Post Office Box or a private mailbox company mailbox. Such people need a method and it cannot be a method that causes stigma attached to their name or file. Perhaps instead of asking residence address, the Trademark Office could ask if the person is a citizen or permanent resident of the US? I understand the need to combat scams, but there are many many US citizens and residents who do not have a permanent address or any residence address where they can or do regularly receive mail. This requirement seems to ignore the reality of the US today.

Posted by Susan Basko on August 30, 2023 at 03:46 PM EDT #

As a seasoned ( not old) trademark practitioner I commend the PTOs long overdue initiative to curb down the abuse of our Registers. Keep it up.

Posted by Jesus Sanchelima on August 30, 2023 at 05:34 PM EDT #

The "where you sleep at night" requirement does NOTHING to help with fraudulent TM applications. The PTO no longer sends any kind of correspondence by physical mail, so the scammer can just select a real US address. The only parties that are hurt are legitimate applications that either do not have a physical address (because the company is virtual), to safeguard yourself from such fraudulent activities you need to have a safe and reliable web hosting provider which can help[ keeping your website at least malware free

Posted by VCCL HOSTING on September 07, 2023 at 05:56 AM EDT #

Fraud management is very important for companies. For a small company to be subject to fraud is its downfall. Good article.

Posted by Velas Aromáticas on October 06, 2023 at 12:33 PM EDT #

Yes, I agree on this points.

Posted by Marathi on October 18, 2023 at 03:49 AM EDT #

It was nice. I appreciate the efforts being taken 😊. Well done !

Posted by aazad hindi news on October 21, 2023 at 05:43 AM EDT #

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