Decluttering at the USPTO Via a New Audit Program
Kelley Drye Client Advisory
As Marie Kondo inspires individuals across the country to tidy up using the KonMari Method, the United States Patent & Trademark Office (USPTO) is similarly tidying up the trademark registry to clear out the clutter of registrations for marks no longer in use. Instead of asking what sparks joy, the USPTO will be cancelling registrations for marks that are not used in commerce through a random audit program.
Post Registration Proof of Use Audit Program
In order to maintain a U.S. trademark registration, trademark owners must periodically declare they are using the mark for all of the goods or services covered by their registration. The owner must also submit evidence of such use, called a specimen, by submitting an example of use for one good or service claimed by the registration per International Class. For example, if a registration in Class 25 covers shoes, shirts, pants, and hats – the registrant is only required to provide an example of use of the mark on one of these products, but must declare that the mark is used on all of these products.
While the rule hasn’t changed, the USPTO is testing the accuracy of declarations of use with newly implemented audit procedures. It will audit about 10% of registrations after Declarations of Use are filed through this permanent program. Owners of randomly selected trademark registrations are required to submit proof of use for two or more goods or services in each Class (instead of one specimen per Class). For example, if a Class 25 registration covers shoes, shirts, pants, and hats – the USPTO may audit and ask for proof of use for shirts and hats.
If the owner is able to provide proof of use for these two goods, the audit will end and the registration stands. If the owner deletes a good or service, or is unable to provide proof of use for the requested items in response to an audit request, the USPTO will then require proof of use for all remaining goods and services in all classes of the registration. Registrations will ultimately be deleted if the requested proof of use is not provided.
Registrations may be audited if they meet two requirements: (1) a filing of a Section 8 or 71 Declaration of Use, and (2) contains either: (a) one Class with four or more goods or services; or (b) at least two Classes with two or more goods or services.
What can you do now?
Review your trademark portfolio to identify registrations that may be candidates for a USPTO audit and for proactive deletion of at-risk goods and services.
Delete all unused and/or outdated goods and services from the registration prior to Declaration of Use filings.
Include evidence of use for more than one product or service with your Declaration of Use filing for eligible registrations to reduce the likelihood of being a target for a USPTO audit.
The USPTO’s guidelines for the program can be viewed at https://www.uspto.gov/trademarks-maintaining-trademark-registration/post-registration-audit-program.
For more information about the USPTO audit program, please contact:
Andrea L. Calvaruso | Patricia L. Werner |