What is a trademark audit?
The USPTO has implemented a process to audit the renewal of trademark registrations. It is called the Trademark Post Registration Audit Pilot Program. The purpose of this audit is to check if the owner has continued to use the registered trademark on the goods or services identified in the registration.
Need to respond to a trademark audit? Contact US patent and trademark attorney Vic Lin at vlin@icaplaw.com to explore how we can help.
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 can you reduce the risk of a trademark audit?
One way to reduce the risk of future audits is to pare down the number of goods or services in each registration. In particular, you can file single class trademark applications instead of a multi-class application.
How to Respond to Trademark 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 items.
If the registration own submits acceptable specimens of use for those audited items, the audit will be over. No further proof of use will be requested by the USPTO. The trademark registration will be maintained and the owner will not to worry about audits until the next renewal deadline.
What if you cannot show use on all specified goods or services in the audit Office Action?
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 do you respond to a 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.
