WHAT IS THE POST REGISTRATION AUDIT PROGRAM?
The Post Registration Audit Program began in November 2017 by the United States Patent and Trademark Office (USPTO). The purpose of the audit program is to ensure that the marks identified in the trademark registry are still being used in commerce. Only those marks which are currently in use may be listed in the registry.
ARE ALL TRADEMARKS SUBJECT TO THE AUDIT PROGRAM?
At present, not all trademarks are vulnerable to an audit. The USPTO is specifically looking at trademark registrations where a Section 8 statement of continued use was filed between the fifth and sixth years following the registration date.
Beyond that, the USPTO seems to be particularly interested in auditing trademarks that include multiple goods and services in each class. For example, if the registration includes one class with more than three goods or services or two classes with two or more goods or services.
A good rule of thumb to keep in mind is, the higher the number of goods or services in each class, the more likely the trademark will be selected for an audit.
HOW DO I RESPOND TO AN AUDIT?
The USPTO will let you know that your mark is being audited via an office action. You’ll be asked for proof that your mark is being used in commerce with the goods or services identified. In order to comply, you’ll need to provide the USPTO with acceptable specimens within the timeframe outlined in the office action.
If you don’t have specimens, then you’ll have to delete the audited goods or services as well as any other goods or services not currently in use from the registration. Be aware, however, that if you delete or provide proof of use for only the goods or services that are being audited, then you’ll receive a second office action.
WHAT IS THE PURPOSE OF SUBSEQUENT OFFICE ACTIONS?
You may receive a second office action as part of the audit if the USPTO needs you to provide proof of use for other goods or services in the trademark registration. Or, you may need to delete any items, not in use. If, after responding to the second office action, the USPTO still identifies items in the registration that don’t have the necessary proof of use, then a third (and final) office action will be sent.
WHAT HAPPENS IF I DON’T RESPOND TO AN AUDIT?
If you ignore the first or second office action, then your registration will be cancelled. If you respond to the first two office actions but ignore the third, then your registration won’t be cancelled. However, any goods or services for which you haven’t provided proof of use will be deleted from the registration.
SHOULD I CONTACT A TRADEMARK ATTORNEY?
If you receive a trademark audit office action, then be sure to consult with one of our trademark attorneys before responding to the USPTO. We can draft a satisfactory response and make sure that you avoid being subjected to subsequent audit office actions, or even worse, cancellation of your trademark.