1. What Is a Domestic Representative?
2. What Is the Function of the Domestic Representative?
3. How Do Non-U.S. Residents Claim Priority and Register Their Trademarks?

A domestic representative is a resident of the United States who registers a trademark or applies for a patent in the stead of a person who does not live in the U.S. The domestic representative may be notified of the proceedings in relation to the application or registration and related rights.

What Is a Domestic Representative?

If you don't live in the United States but you need to register a trademark there, you'll need a domestic representative to carry out the process. That person will be notified and act on your behalf as that trademark application is being processed.

The domestic representative may be the following:

  • An individual
  • A firm
  • A corporation
  • A union
  • An association
  • Any other organization

Any of the above can serve as a "juristic person," meaning they can sue or be sued in a court of law.

What Is the Function of the Domestic Representative?

If you think this is just like power of attorney, you are mistaken. The domestic representative might act as a proxy, but this person doesn't have any immediate authority in the trademark registration process. The domestic representative is bringing you under the jurisdiction of the U.S. legal system and helping you to establish trademark priority.

In the United States, trademark rights are related to commerce, whether the trademark is registered or not. When someone uses a specific trademark before anyone else does, that first person is given priority to use that trademark in the market.

The first user of a trademark in commerce is referred to as the senior user. Each subsequent user of the same trademark is referred to as a junior user. The senior user has priority to use that mark within their geographic area.

In most cases, the senior user will also have national priority if they federally register their trademark. One exception arises when any junior user is already using the trademark in a remote area prior to the date when the senior user files their application.

Another exception is when a potential user of the trademark files an application to register the trademark and indicates their intent to use that mark commercially. When that happens, the clock is reset on the process. This means the priority date will only take the filing date into account and not the date when the trademark was first used.

It's a good idea to file a federal trademark registration application if a search determines that no one else is already using the mark you want to use. The priority date relates to the time when you file your application, so do this as soon as possible.

How Do Non-U.S. Residents Claim Priority and Register Their Trademarks?

When trying to claim priority with an existing trademark registration in the United States, you must present the following to prove that you hold a trademark in its country of origin:

  • A true copy of the registration
  • A certification
  • A certified trademark registration
  • A translation of the registration that is signed by the translator (if the registration isn't in English)

You must also verify that you intend to use the trademark in commerce. In addition, you may not exceed the scope of goods and services covered by the foreign registration.

To help the process along, the United States Patent and Trade Office recommends that you send requests to do the following through the Trademark Electronic Application System (TEAS) at the USPTO's website:

  • Assign powers of attorney
  • Revoke powers of attorney
  • Withdraw as attorney
  • Designate a domestic representative

When you file documents through the TEAS, your data is immediately stored on the Trademark database.

How Can One Change Their Domestic Representative?

If you are the owner of a trademark registration and you would like to designate a new domestic representative on paper, the USPTO will scan that image of the document, but will not update that information on its database with that information alone. You must also do the following simultaneously to spur the USPTO to update its database:

  • File a §8, §12(c), §15, or §71 affidavit or declaration.
  • File a §9 renewal application.
  • Use §7 of the Trademark Act to request an amendment or correction of your registration.

With everything in order, the USPTO will scan the images of these documents, as well, then update its database.

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