In March 2017, the USPTO announced a program to audit trademark renewal filings to confirm trademarks were being used on in connection with all the claimed goods and/or services.
The United States Patent and Trademark Office (USPTO) is increasingly concerned that registered trademarks are no longer being used in connection with all the goods and/or services identified in the registrations. The USPTO is concerned about registrations on the principal register claiming more goods or services than they should because there is a belief we are running out of good trademarks in the U.S.
Due to USPTO concerns that registered trademarks are not still being used in connection with all the goods or services listed during the maintenance and renewal process, if they ever were used on all of the goods or services, the USPTO developed an audit program in March 2017.
What Trademark Registrations Get Audited by the USPTO?
The USPTO randomly selects which trademark registrations will be audited after renewal and maintenance documents are submitted, such as when an Affidavit of Use is filed. A trademark registration will only be subject to an audit if it has four goods or services in one class or two goods or services in two separate classes. The USPTO states that approximately 10% of trademark registrations that file renewal documents will be subject to a random audit.
The above outlines what registrations may be audited by the USPTO. Learn more about the program at the USPTO website.
Trademark owners are notified they are subject to an audit when the Examining Attorney issuing an Office Action that is independent of whether the information submitted in an Affidavit of Use is acceptable or not. As with any Office Action, the trademark owner has six months to respond or else the trademark registration will be canceled.
How to Respond to an Audit
The Office Action issued by the Examining Attorney during the trademark renewal process will request proof of use for two specifically identified goods or services listed in the trademark registration. The required proof of use for the two identified goods or services in the Office Action is the same as any acceptable specimen during the application process. In other words, proof of use for a product includes the trademark on the product, product packaging, or point of sale display. Proof of use for a service includes advertising such as in a newspaper or online.
In the even the trademark owner cannot produce evidence for one or both of the goods or services identified in the Office Action, they have the option to to delete those goods or services from the trademark registration. If a trademark owner chooses to delete the good or service from the registration, the USPTO may require proof of use for every item identified in the trademark registration.
Collecting evidence of use for each and every item identified in a trademark registration can take excessive time and cost significant money. Therefore, the best practice is to keep diligent records of use and to delete any unused items in a trademark registration prior to submitting any renewal documents.
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