Andrew Flusche, Fredericksburg Lawyer

Foreign companies are welcome to file trademark applications in the United States. But one key thing they should be aware of is appointing a domestic representative.

This is simply designating someone within the United States to accept notices regarding your trademark. It is specifically authorized by 15 U.S.C. 1051(e). By designating someone as your domestic representative, you are telling the world that the person is someone “on whom may be served notices or process in proceedings affecting the mark.” If you fail to designate a representative the Director of the U.S. Patent and Trademark Office is the default recipient.

If you hire an attorney in the United States to file your trademark application, he will most likely also serve as your domestic representative. But you should make sure it is properly taken care.

One key factor in this decision might be where the domestic representative is physically located. A recent court case suggests that you could be compelled to testify in court regarding your trademark, if a simple subpoena is served upon your domestic representative. The case actually forced a Portuguese company to send a witness to the Eastern District of Virginia to appear and testify in a case brought by Virgin Enterprises.

This means that if you have any type of U.S. location or presence, you might consider finding a domestic representative in that area. Hopefully you will never be compelled to appear in court, but it could be easier for your company to send foreign employees to a location where you already have a business presence.

Photo by Stuck in Customs