What is a "domestic representative" for US trademarks?

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Under US law, most legal actions are brought against natural persons or against legal entities (for example corporations and partnerships). Such actions are called in personam actions. But under US law, under certain circumstances, it is also possible to bring a legal action against an item of property directly. Such an action is called an in rem action.

One example of an in rem action is an action directed against a pending US trademark application or against a US trademark registration.

How does the owner of the pending US trademark application or US trademark registration learn that an in rem action has been commenced? If the owner of the trademark application or registration is an entity in the United States, then the party bringing such an action is required to serve legal papers upon the owner, and in this way the owner would learn that the legal action has commenced.

But if the owner of the registration is an entity located outside of the US, and if that entity has not appointed a "domestic representative", then the party bringing such an action is required merely to serve the legal papers upon the USPTO itself. There can be no assurance that USPTO would pass those papers along to the owner, nor that the USPTO would pass those papers along promptly. There is thus the risk the owner would not even learn of the commencement of the legal action until after the legal action had run its course, perhaps with a result unfavorable to the owner. The trademark registration might be lost.

If, however, the owner of the registration has appointed a "domestic representative", then the party bringing such an action is required to serve the legal papers upon the domestic representative. The domestic representative can then inform the owner. In this way the owner will learn that the legal action has commenced and can take appropriate measures.

As you will appreciate, the prudent non-US-based owner of a pending US trademark application or registered US trademark will take steps to appoint a "domestic representative" for such a pending trademark application or granted trademark registration.

When Oppedahl Patent Law Firm LLC is retained to take action regarding a pending US trademark application or registered US trademark, the firm will generally offer to accept appointment as "domestic representative" at no additional professional charge beyond the professional charge for the action taken. For example our standard Power of Attorney in trademark cases for signature by a non-US entity includes language appointing our firm as domestic representative.

Oppedahl Patent Law Firm LLC can also offer to accept appointment as "domestic representative" independently of any other action regarding a pending trademark application or registered trademark, for a separate professional fee. The owner may also wish to have Oppedahl Patent Law Firm LLC keep track of upcoming renewals and other future action items. This can be done for a single application or registration or for an entire portfolio.