What is a trademark audit?
The USPTO has recently started a process to audit the maintenance or renewals of trademark registrations, called the Trademark Post Registration Audit Pilot Program. The purpose of this audit is to check if the owner has continued to use the trademark on the goods or services identified in the registration.
Which trademark registrations are vulnerable to a potential audit?
The USPTO is focusing on trademark registrations that meet the following requirements:
- A Section 8 statement of continued use was filed; and
- The registration includes:
a. at least one class with 4 or more goods/services; or
b. at least two classes with two or more goods/services.
Generally, it appears that the USPTO is targeting registrations that have a higher number of goods/services in each class.
How to respond to first audit Office Action
The first audit Office Action will identify two additional goods or services for each audited class that will require proof of use. In response, the trademark owner must submit current specimens of use for each of the two goods or services.
If the registration owner is unable to submit current specimens for both goods or services, the owner must delete not only the audited goods/services, but all other unused goods/services from the registration. If the owner deletes only audited goods/services, the USPTO may issue a second audit Office Action.
Deletion of an audited product or service will generally lead to a second Office Action. To avoid a second Office Action while deleting an audited item, the registration owner should respond to the first Office Action by submitting proof of use of all unaudited goods/services and deleting any unused goods/services from the registration.
How to respond to second audit Office Action
If issued, a second audit Office Action will require proof of use for all remaining goods or services in the registration. In response to a second Office Action, you should submit proof of use for all remaining goods/services or delete any unused items. A third and final Office Action may be issued if the USPTO determines that there are still goods/services remaining in the registration that do not have acceptable proof of use.
Will a trademark registration be canceled for failure to respond to an audit?
Failure to respond to either a first or second Office Action in an audit will result in cancellation of the registration. If a third Office Action is issued, a lack of response will result in the deletion of only those goods/services for which proof of use has not been accepted.