Can Your Trademark Registration Be Audited? | About the Proof of Use Audit Program

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In 2017, the United States Patent and Trademark Office (“USPTO”) introduced a new audit program that was designed to remove unused trademarks in order to reflect a more up-to-date and accurate federal trademark register.

The Trademark Registration Audit Program Focuses on Good/Services in Actual Use

Found in 37 C.F.R §§ 2.161(h), 7.37(h), the USPTO audit program randomly selects trademark registrations to be audited in order to determine whether the registered trademarks are actually in use.  In order to prove use to auditors, trademark owners are required by the USPTO to submit proof of use for at least two additional goods or services per registered class, requiring more than the usual one specimen per class as required by declarations of use under trademark law. 

Officially known as the Post Registration Proof of Use Audit Program, the audits are designed to root out trademarks that are not in use for all of the declared goods and services, thereby allowing the removal of classes that are not supported by specimens of use or even for cancellation of entire registrations because trademarks that remain registered, but not in use unfairly blocks the registration of trademarks that may be similar and actually in use.  As such, the USPTO’s audit program promotes a more accurate reflection of the trademarks actually in use with their related goods or services.

Eligibility for Post Registration Proof of Use Audit

Not all trademarks, however, are eligible to be audited.  The USPTO only audits trademark registrations that: 1) have filed a Section 8 or 71 declaration of use, and 2) include at least one class with four or more goods or services OR is registered with two classes of two or more goods or services.

If a trademark registration is audited, the trademark owner will receive notice from a post-registration trademark examiner.  The notice will request that the trademark owner submit proof of use for two additional goods or services within the class required by the examiner.  Qualifying as an office action, the audit will also point out any errors, mistakes, or issues with the declaration as filed by the registrant.  In order to properly respond to the audit office action, the registrant must address any and all issues raised by the post-registration examiner.  To properly demonstrate proof of use, the registrant must submit evidence of the mark as used in commerce with the required goods or services identified by the examiner.  If the examiner deems the response to be satisfactory, the examiner will then issue a notice of acceptance.  If the response is rejected, however, the examiner will issue a second office action.  

It should be noted, that for audits, the proof of use for goods differs from specimens that are required by trademark examiners.  As a general rule, proof of use for goods must meet stricter guidelines than specimens. For example, proof of use must show the mark actually being used in connection with the identified goods instead of simple mockups or designs.  Proof of use for services, however, are the same as specimens.      

When Proof of Use is Not Available in a Trademark Registration Audit

If the respondent cannot provide proof of use for the audited goods or services, the proper response would be to delete all goods or services that cannot be supported by proof of use as well as provide proper proof of use for all the listed goods and services.  Notably, if time still remains in the statutory filing period, the USPTO will allow for the filing of a new declaration, which should be accompanies by the payment of additional filing fees.  

While a new declaration may allow for easier response to the first office action because the new filing should be more accurate as the registrant knows which goods and services it can provide proof of use for, the office action is still not considered to be properly responded to until the examiner receives the proof of use for all the requested goods and services.  In other words, the new declaration should only be filed if there remains time in the statutory filing period and if the trademark owner knows that the new declaration can be properly supported by proof of use.  Otherwise, a new declaration that still covers unsupportable goods and services merely means increased costs for basically no improvement in the process as the examiner will still reject the response.  

Deleting Goods and Services from a Specification Due to a Trademark Proof of Use Audit

Notably, for audits, simply deleting the goods or services that cannot be proven to be in use will not make the office action go away.  If classes are simply deleted, the examiner will require proof of use for all the remaining goods or services.  Lastly, if the examiner finds that the response to the second office action is not satisfactory, the USPTO will issue a third and final office action that provides notice of complete deletion of unsupported goods and services from the registration. Likewise, if the trademark is audited and there is no response to any of the office actions, the registration will be completely cancelled. 

What Does the Trademark Registration Audit – Proof of Use Program Mean for TM Owners?

In order to avoid such a fate of cancellation, trademark owners should seek the counsel of experienced trademark attorneys that can respond appropriately to any audit-related office actions while still within the proper timeframes. Experienced counsel will also be able to advise clients on how to file Petitions to the Director, which require the payment of additional fees, should there be missed deadlines, if providing proof of use would be unduly burdensome for the owner, or if the owner simply disagrees with the examiner’s decision regarding responses to the second or third office action. In the end, trademark owners are best protected with experienced trademark counsel to guide them through both the application and post-registration process to help avoid cancellation of their registrations.

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