Use It or Lose It: U.S. Patent and Trademark Office to Audit Certain Existing Trademark Registrations

December 10, 2019

Move over IRS, the U.S. Patent and Trademark Office (USPTO) is jumping on the audit bandwagon. The USPTO has recently implemented a new auditing program aimed at promoting “the accuracy and integrity of the trademark register.” After a trademark registration is secured, there are required maintenance filings that must be completed with the USPTO to maintain a registration. The USPTO’s audit program is using some of these renewal filings as an opportunity to make trademark owners prove that trademarks are in use in commerce in connection with all goods and services in a registration. So what do trademark owners need to know? Here are the basics:

  • The USPTO is focusing audit efforts on existing trademark registrations that have either (i) four or more goods or services listed in a single class, or (ii) at least two classes with two or more goods or services.
  • The USPTO will decide whether to audit a registration when the owner files required maintenance/renewal filings at the six-year mark (Section 8 or Section 71).
  • If a registration is selected for the audit, the USPTO will issue an office action to notify the owner, which requires the owner to respond within six months to avoid cancellation of a registration.
  • In the office action, the USPTO examiner will (1) identify particular goods and services for which the owner must provide additional proof of use and (2) encourage the owner to voluntarily delete any goods or services for which the owner cannot provide proof of use, even if the USPTO did not request proof of use for the particular good or service.
  • If the owner is unable to provide acceptable proof of use or elects to voluntarily delete any goods or services, regardless of whether identified in the first office action, the USPTO will send a second office action requiring proof of use for all the remaining goods and services in the registration.
  • If the owner is again unable to provide acceptable proof of use or voluntarily delete any goods or services in response to the second office action, the USPTO will send a third and final office action deleting all goods and services without acceptable proof of use and advising that the registration will remain in force for only those goods or services for which an acceptable specimen has been provided.
  • If the owner fails to provide a timely response to any of the audit office actions or take other corrective action within the statutory period, the registration will be canceled in its entirety.

With the new audit program in full swing, what should a trademark owner do now? Here are some helpful tips:

  • Proactively Delete Goods and Services No Longer Offered. Even though trademark owners already carefully review the goods and services listed in any registration they own, it is extra important now to look at them with a critical eye to preemptively remove stale goods and services, so that, in the event of an audit, the owner can avoid triggering further inquiry by having to delete goods once the audit has commenced.
  • Conduct a Reasonable Inquiry of Current Use. Be sure to collect, or at least have easy access to, current proof of use for all goods and services listed in the registration, not just the proof of use submitted with the Section 8 or 71 filing. (NOTE: If collecting online proof of use, be sure to capture the URL and the date the website was accessed/printed to comply with new USPTO rules.)
  • Take Out the Guess Work for the USPTO. When responding to an audit, make it easy on the Examining Attorney by clearly labeling or describing in any declaration or office action response what is shown in each proof of use, while also making sure the proof of use allows the Examining Attorney to clearly see use with the specific good or service.

It is important to keep in mind that when trademark filings are submitted, the owner certifies that the factual statements in the filing (including that a trademark is in use in connection with the goods and services listed) are made with evidentiary support. A knowing and willfully made false statement or representation subjects the signed to criminal penalties under 18 U.S.C. § 1001.

Preparation and close review of trademark renewal filings in advance will help brand owners avoid headaches later.