Trademark Audit: How to lose your trademark registration

What is a trademark registration audit?

A trademark registration audit is a USPTO program to check random trademark registrations to see if the registered trademark is still in use. Known as the Post Registration Audit Program, the goal of the USPTO is to bolster the accuracy and reliability of its trademark register. Audits give the USPTO a way to cancel registrations for trademarks no longer in use with the exception of marks with excusable nonuse.

Trademark registration audits can improve efficiency by avoiding the need for third parties to bring cancellation actions against inactive marks. The risk of being audited should cause trademark owners to be more proactive in either ensuring their mark is still in use or deleting specific goods or services from their registration when filing a renewal or post-registration maintenance.

Which trademark registrations bear a greater risk of being audited?

There are two types of trademark registrations which are susceptible to audits:

  1. a registration with at least one class that contains 4 or more goods or services; or
  2. a registration including at least two classes with 2 or more goods or services.

As discussed further below, the above audit criteria may be avoided by filing trademark applications in certain ways.

When can trademark registration audits occur?

The timing of a potential audit starts after a registration owner files a declaration of use under Section 8 or Section 71. If your trademark was only recently registered, you do not need to worry about an audit until your first post-registration maintenance is filed between the fifth and sixth year anniversaries of the registration date. Nevertheless, you should diligently continue to use your registered mark on all the goods or services identified in your registration.

If your registration bypassed use requirements by relying on a foreign registration, you should make prompt use of your registered mark without delay. Do not wait a few years after the registration date to begin using the mark on the registered goods or services.

How can you avoid a trademark audit?

Some simple filing strategies can avoid the possibility of a trademark registration audit. Based on the current USPTO requirements, you can file a trademark application with fewer goods or services to avoid the possibility of your subsequent registration being audited.

For example, you can file a single class application containing no more than three goods or three services which would place your subsequent registration outside the scope of a possible audit. If your goods or services span multiple classes, consider filing separate single-class applications which has additional benefits besides avoiding audits.

How can you pass a trademark registration audit?

Certain parts of the trademark registration process are outside the trademark owner’s control. Since eligible trademark registrations are randomly audited, avoiding an audit may be outside your control if your registration has the required number of goods or services. It is also possible that the nonuse of your registered mark on certain goods or services cannot be helped. What you can control is how you renew or maintain your trademark registration.

A thorough and accurate review of your trademark usage will be immensely helpful in surviving an audit. Make sure you have sufficient proof of your ongoing use for those items still sold under the registered mark. Renew your registration honestly and accurately by deleting those items no longer sold under the mark. That way, you will be able pass with flying colors if and when your registration is audited because you’ll have the proof to back up your declaration of use.

Need to respond to a trademark registration audit?

Contact experienced patent and trademark attorney Vic Lin at vlin@icaplaw.com or call (949) 223-9623 to see how we can help you respond to a registration audit and keep your trademark rights.

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Frenda Williams
Frenda Williams
2023-02-21
I have had the pleasure of working with Vic and his team at Innovation Capital Law Group on Trademark creation and contracts. As a solo and non-tech founder, the assistance, guidance and recommendations from Vic and his team have been INVALUABLE. And, with the knowledge that I have a Solid, well versed and caring legal team I can turn to, I have the confidence I need to navigate the intricacies of the tech industry as a solo founder. With that being said, If you’re a startup and you’re looking for a legal team that speaks your language, knows the industry and makes you feel like family…. Innovation Capital Law Group is a Perfect fit for you, your company and your team. Five out of Five Stars… don’t let their brilliance blind you 😁
Shiwei Liu
Shiwei Liu
2023-02-20
Excellent service and quick response. Lots of informative documents on its website.
Chang Chien Michael
Chang Chien Michael
2023-02-20
I have worked with iCap for more than 7 years. I am very glad with his professional knowledge that 7 utility patents were granted by USPTO. Vic and his team are very efficient and knowledgeable. Every time he can transcribe my design idea perfectly in two weeks and file it with no rejection from USPTO. The other service including the granted patent following up is always in time to remind me to take actions. That is why I still stick on iCap as my first priority when I want to file a US patent.
Mats Johansson
Mats Johansson
2023-02-20
We have been happy client for 10+ years. Awesome Patent Law Firm!
Hanson Chang
Hanson Chang
2023-02-16
Glad to write a review for Innovation Capital Law Group. We previously worked with a big law firm (2200 employees) on our patents, and decided to shift over to Innovation Capital. It was a great decision, this team got our patents done faster, more effectively, at a lower cost, and with broader claims. Win all around
Genevieve Springer
Genevieve Springer
2022-09-09
Clear, discernible tools and strategies couched within a business conceived from a genuine interest in doing right by founders.
InPlay Inc
InPlay Inc
2022-06-30
Vic and his team have been providing us with the best patent application experiences we could ever have in our entire career life! Their professionalism and technical knowledge have really saved us a lot of communication effort and time on the applications. Definitely highly recommend if anyone is looking for help with IP protection for their business.
Meg Crowley
Meg Crowley
2022-03-05
After working with Vic and his team at Innovation Capital Law Group, our organization is confident our trademarks were solid and protected. Thank you team.
Andy Dong
Andy Dong
2022-02-28
I have been using Innovation Capital Law Group for a few years and continue to use them. They have provided an excellent services on our legal issues including intellectual properties and patents . They are very responsive, easy to work with and very competent . I highly recommend them.

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