The United States Patent and Trademark Office has enacted a new program that requires some trademark registrants to go beyond the normal requirements of renewing their trademark and prove continued use of the items listed in their trademark applications. The USPTO’s audit program requires trademark registrants and their attorneys to be extra vigilant when renewing their trademarks and ensure that every item listed in a registration is actively being sold in connection with the trademark.
The permanent audit program officially launched on November 1, 2017. In just under two years since the audit program began, the USPTO found that 50% of registrants who answered had to delete at least some of their listed goods and services. Since these registrations were created before the audit program was in place, the trademark owner and the attorneys who represent them did not take as much care while filing for specific goods or services. Obtaining an attorney to manage your filings that understands this audit program is very beneficial; your counsel can help you state clearly what goods or services you provide, as well as help you avoid deleting goods in the audit later.
If Selected for an Audit, Additional Proof of Use is Required
If your mark is chosen for an audit, a USPTO specialist or staff attorney will send a “Post-Registration Office Action” which will be recorded in the registration’s file in the TSDR database. Your correspondent/attorney will also get an email notification that the audit has issued.
The audit Office Action will include the following:
The Sections 8 & 15 Combined Affidavit received on March 26, 2020, is otherwise acceptable; however, the owner/holder of the registration must comply with an audit as explained below.
Registration Selected for Audit
The USPTO is performing random audits of U.S. trademark registrations to assess and promote the accuracy and integrity of the trademark register. . . This registration has been randomly selected for audit to determine whether the mark is in use with all of the goods and/or services identified in the declaration of use submitted to maintain the registration.
The response to the audit is two-fold:
- Proof of current use of the registered mark in commerce for the following goods and/or services: