USPTO WAGES WAR WITH NEW TRADEMARK AUDIT PROGRAM
A central tenant of trademark law is the requirement that the trademark, whether it be a name, logo, slogan, or even sound, be used in connection with the actual sale of a good/service in interstate commerce. However, traditionally, while a trademark applicant has always been required to provide a specimen for some of the goods/services in the trademark application, the USPTO has generally not required all of the goods/services listed to be verified as used in commerce, with a corresponding specimen.
Unfortunately, over the last couple of years, it has become increasingly apparent that certain trademark applicants have taken advantage of this rather relaxed filing requirement and the powers that be decided that a chance was necessary. The United State Patent and Trademark Office (USPTO) has thus instituted a renewal program that requires trademark owners, if audited, show that they are actively selling all of the trademarked goods and services. Since the launch of the effort in 2017, the audit program has revealed that nearly half of all registrants listed goods/services, which they did not actually use in commerce!
WHY THE USPTO HAS ENABLED A TRADEMARK AUDIT PROGRAM
The USPTO auditing program is designed to prevent fraud and to ensure that the USPTO database covers authentically trademarked items. The USPTO does not want trademark applicants to obtain proprietary rights to trademarks for goods/services that the Applicant is not actually selling. The purpose of the audit is to weed out both bad actors who have purposefully manipulated the system and unsuspecting Applicants who simply do not understand this basic feature of trademark law and have quite innocently listed goods/services that they had no business asserting rights to.
HOW THE USPTO TRADEMARK AUDITING PROGRAM WILL WORK
By retaining the services of a knowledgeable attorney, you can confirm the viability of your goods and services and see, precisely, how they are used. If your trademark is audited, you will need to show additional proof of use. So, what does this mean on a practical level? The USPTO examining attorney (or perhaps a trademark clerk) will deliver a “Post-registration office action” to the owner and/or attorney on file and post a notice of the Audit in the Trademark Status and Document Registration (TSDR) database. For your trademark to merit an audit (at least in theory), it needs to meet a certain set of conditions, namely:
- The applicant filed a timely Section 8 or 71 declaration of use; and
- (a) the trademark application contains at least one class with at least 4 goods/services
(b) the trademark application includes at least two classes with at least two goods/services
In the event that the trademark application is indeed audited, the applicant will be required to submit two additional specimens for each audited class. In the event that the applicant cannot provide the appropriate specimens which demonstrate proof of use, the applicant will be required to delete all of the goods/services which cannot be supported by evidence of actual use.
HOW A TRADEMARK ATTORNEY CAN HELP BEFORE, DURING, OR AFTER AN AUDIT
While you are not required to hire an attorney if you live in the U.S., it is strongly advised you do so. According to the USPTO, a trademark attorney can help you by –
- Determining if your trademark can be safeguarded legally;
- Determining the proper filing for your TM application;
- Making sure your USPTO application accurately lists your goods and services;
- Replying to registration refusals and questions from a USPTO TM examining lawyer;
- Explaining your TM rights and how to enforce them;
- Representing you in case of complaints against your TM;
- Staying compliant with your USPTO registration; and
- Giving TM legal advice.
With an attorney’s guidance and help, you can provide additional audit information that shows proof of current use, supported by a signed declaration or legal affidavit.
THE USPTO RESPONSE TIME
Registrants who do not respond to audits will have their registrations canceled. You must respond to a USPTO audit within 6 months from an issuance of an Office Action. Having an attorney in your corner will help you determine the use of your products and services. If you cannot provide proof of use for certain items, delete them from your listing. Ask your attorney what is bona fide proof of use. While the USPTO may expand its auditing program in the future, the agency now audits only registrations that cover renewal filings.
ENSURING FUTURE TRADEMARK USE
Besides ensuring active use of your trademark, it is your responsibility, as a trademark owner, to continue to use your trademark in commerce. Remember, trademark law operates under the, “If you don’t use it, you lose it” doctrine and you CAN ONLY maintain your trademark rights if you continue to make sales under the banner of your mark in interstate commerce.