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How To: Respond to a USPTO Office Action Requesting a Domicile Address and Maintain Your Privacy

In September 2019 the United States Patent and Trademark Office ("USPTO") issued guidance providing that all applications must include the applicant’s domicile address. See, 37 C.F.R. §§2.11(a), 2.32(a)(2), (a)(4), 2.189, Examination Guide 4-19, at I.A. (Rev. Sept. 2019).


The USPTO has stated that if an applicant lists as its domicile a post-office box address or “care of” address or similar variation, or no street address at all, the examining attorney or post registration specialist will issue an office action requiring the applicant’s or registrant’s street address. 37 C.F.R. §2.32(a).


All of the filings with the USPTO, including an applicant's domicile address, are public. Thus, as a result of this requirement, many applicant's who work from home or otherwise don't want their street address published were faced with a dilemma.


In order to address these concerns, the USPTO subsequently provided guidance that states the applicant's domicile address can be kept private if (1) you properly use certain electronic forms and (2) you provide both a mailing address and a domicile address, and these addresses are not the same. First, indicate on the initial application form or Change Address or Representation (CAR) form that your mailing and domicile address are not the same, then enter your domicile address in the “Domicile Address” field and your mailing address in the “Mailing Address” field in the “Owner Information” section of the form. The mailing address will be made public; the domicile address will be hidden. Providing the domicile address in any other part of the form will make that address publicly viewable.


While, the USPTO has made it relatively simple to maintain a private domicile address when filing an initial application, the issue that I have seen arise, is in relation to those applicants who filed the application before the new rules went into effect and are now being required to provide a domicile address.


The examiner in those cases will likely issue an office action requesting the applicant provide a domicile address. However, when the applicant responds to the office action using the response forms those responses are public, in their entirety, including any domicile address entered.


Fortunately, there is a fairly simple work-around for those applicant's who don't want their domicile address made public:


1. If the only action point in the office action is to provide a domicile address, instead of submitting a Response Form, submit a Change Address or Representation (CAR) form with your domicile address and separate mailing address. Then call the examining attorney (contact listed at the bottom of the office action) to let them know and ensure they don't need you to take any additional action.


2. If there are multiple action points in the office action, submit a Response Form addressing all of the issues other than the domicile address and then submit a Change Address or Representation (CAR) form with your domicile address and separate mailing address. Then call the examining attorney (contact listed at the bottom of the office action) to let them know and ensure they don't need you to take any additional action.


Remember once an office action is issued you have six months from the issue date to respond.


While this article strives to provide general information on the USPTO and responding to specific office actions, this article does not contain legal advice and I highly recommend that you speak with your trademark attorney for further guidance.


If you have any questions please contact O’Neill Tran Law today at info@oneilltranlaw.com for additional information.







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