What is a trademark audit?
A trademark 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:
- a registration with at least one class that contains 4 or more goods or services; or
- 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.