Did you know that a U.S. trademark registration can be audited by the United States Patent and Trademark Office? Yes, the USPTO conducts random audits of approximately 10 percent of maintenance and renewal declarations and affidavits.  The audits apply to filings of both regular U.S. trademark registrations and Madrid Protocol international registrations to require additional proof of use of two items of goods or services specifically selected by the USPTO.

The USPTO can issue an "Office Action" to verify that the registered mark is actually in use in connection with specifically selected goods and services identified in the registration beyond those for which an Affidavit of Use (Section 8) was recently filed. The issues raised in the audit are independent of whether the evidence of use submitted in connection with a recently filed declaration or affidavit of use was acceptable.

How does a U.S. trademark registration get selected for audit?

Based on the CFR Notice of Proposed Rule-making, the USPTO implemented a program in March 2017 to audit trademark maintenance and renewal filings to ensure that trademark registrations were not being maintained in connection with goods and services for which the marks are no longer in use or for which use never commenced.

Why did the USPTO implement an audit program?

In the United States, trademark rights are tied to the actual use of the trademark in U.S. commerce. The USPTO’s audit program was instituted in response to growing concerns that the trademark register is cluttered with registrations that cover goods and services for which the registrant has not ever used or is no longer using and is therefore not entitled to registration for those goods or services. These registrations may serve as obstacles to other trademark owners with legitimate interests in registering their trademarks.

Is a response to the audit Office Action mandatory?

Yes. Failure to respond to the Office Action will result in cancellation of the registration in its entirety, even if the originally submitted specimen(s) was or were considered acceptable for other goods and services. For information on the consequences of filing a response admitting to non-use of the selected goods or services or providing specimens of use that are deemed unacceptable, see further below.

How do I respond to the Office Action?

Owners of registrations that have been selected for the audit must submit proof of use for two specifically identified items of goods or services in the trademark registration, listed in the Office Action.  Also, they must submit a declaration that the mark was actually used in U.S. commerce in connection with those and all remaining goods or services when the relevant maintenance or renewal documents were filed.

In response to the Office Action, the registrant should submit evidence demonstrating that the trademark is used in connection with those two items of goods or services. If the registrant is unable to submit acceptable proof of use for either or both of those two items, the registrant should delete those items and any other goods or services identified in the registration for which the registrant cannot provide sufficient proof of use. Deletion of either of the specifically selected goods or services may result in a second Office Action requiring proof of use for all remaining goods and services for which proof of use is not of record.

What constitutes acceptable evidence of use for the audit?

The requirements for the proof of use to be acceptable are more stringent than those needed to support a pending application or to maintain or renew an existing registration in the normal manner.

Acceptable proof of use for goods includes photographs that show the mark on the actual goods or packaging or photographs of displays associated with the actual goods at their point of sale. While the normal requirements permit submission of a mere tag or label, tags or labels not shown affixed to the goods are unacceptable proof of use in response to an audit. Similarly, packaging that does not show or name the goods inside the package is not acceptable proof of use in this context.

Acceptable proof of use for services includes signs, photographs, brochures, website printouts, or advertisements that show the mark used in the actual sale or advertising of the services.

What are the consequences of deleting the selected goods or services from my registration?

An examining attorney will issue a second Office Action requiring proof of use for all remaining goods or services.

A request by the registrant to delete either or both of the specifically selected goods is effectively treated as an admission that the mark was not actually in use in U.S. commerce at the time the registrant filed its maintenance and renewal declarations in connection with the remaining goods or services identified in the registration.

What happens if the evidence of use I submit in response is not acceptable?

If the proof of use submitted does not meet the requirements of the audit, the examining attorney may issue a second Office Action requiring proof of use for all remaining goods or services. Therefore, registrants should be thorough when reviewing their registrations and making any changes to the identified goods or services. In a worst case, all of the goods or services could be deleted, and the registration canceled.

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Paul Van Slyke has a unique combination of in-house IP experience for a major oil company, decades of litigation experience as lead counsel, and 18 years as a partner with a major international law firm. In a legal career of over 30 years, his focus has always been intellectual property law and related matters. He has deep and recent experience in trademark, design patent and branding law and the intersecting areas of copyright, e-commerce, and anti-counterfeiting law.

Part Two