You’ve had your trademark long enough to need to file a maintenance/renewal. Congrats! After filing your renewal, though, you receive an audit AND it’s in the form of an Office Action! What does that mean?! While still somewhat rare, audits do happen. However, they are not used to single people or trademarks out. They are random, and used to ensure that people are actually using their trademark for all of their goods and services.
What You Need to Know About the USPTO’s Post Registration Audit Program
If you own a trademark registration in the United States, you may be familiar with the requirement to file periodic maintenance documents to keep your registration alive. But did you know that your registration could also be randomly audited by the United States Patent and Trademark Office (USPTO) to verify your trademark use? In this blog post, we will explain what the USPTO’s post registration audit program is, why it exists, how it works, and what you can do to prepare for it.
What is the post registration audit program?
The post registration audit program is a quality control measure that the USPTO started in November 2017 to promote the accuracy and integrity of the trademark register. The program aims to ensure that trademark owners are using their trademarks in commerce with all the goods or services listed in their registrations, as required by law.
The USPTO randomly selects registrations with required maintenance filings (such as Section 8 or Section 71 declarations of use) for audit. If your registration is selected for audit, you will receive an office action from the USPTO asking you to provide additional proof of use for some or all of the goods or services in your registration. You will have six months to respond to the office action, or your registration will be canceled.
Why does the USPTO audit registrations?
The USPTO audits registrations to help preserve the trademark register as a reliable reflection of trademarks in use in commerce. The trademark register in the United States is a use-based register, meaning that trademark owners must use their trademarks in commerce with the goods or services in their registrations to maintain their rights. However, some trademark owners may file inaccurate or improper use claims in their maintenance filings, either intentionally or unintentionally, jeopardizing the validity of their registrations and blocking future applications by others.
By auditing registrations and requiring proof of use for additional goods or services, the USPTO can identify and remove any goods or services that are not in use from the registrations, resulting in a more accurate and useful trademark register.
How does the post registration audit program work?
The post registration audit program works as follows:
The USPTO randomly selects registrations with required maintenance filings (such as Section 8 or Section 71 declarations of use) for audit. The selection criteria may vary depending on various factors, such as filing basis, number of classes, number of goods or services, etc.
The USPTO issues an office action to the registrant or their attorney of record, requesting additional proof of use for some or all of the goods or services in each class of the registration. The proof of use must show how the trademark is used in commerce with each audited good or service. The proof of use can be a label, tag, packaging, website screenshot, advertisement, invoice, catalog, brochure, or any other evidence of use.
The registrant has six months to respond to the office action by submitting proof of use for each audited good or service. If proof of use is not provided for any audited good or service, the registrant must delete it from the registration and pay a $250 deletion fee per class. If proof of use is provided for all audited goods or services, no deletion fee is required.
The USPTO reviews the response and determines whether proof of use is acceptable for each audited good or service. If proof of use is acceptable for all audited goods or services, the USPTO accepts the maintenance filing and issues a notice of acceptance. If proof of use is not acceptable for any audited good or service, the USPTO issues a second office action requiring deletion of those goods or services and payment of a $250 deletion fee per class. If deletion fees are not paid within six months, the entire registration will be canceled.
The registrant can appeal any final refusal by filing a request for reconsideration with the USPTO within six months of issuance of the final refusal. If reconsideration is denied, the registrant can file a petition to the Director within two months of denial of reconsideration. If petition is denied, the registrant can file an appeal to the Trademark Trial and Appeal Board (TTAB) within two months of denial of petition.
What can you do to prepare for an audit?
The best way to prepare for a possible audit is to keep accurate records of your trademark use and update your registration as needed. You should only claim use for goods and services that you are actually offering under your trademark, and delete any unused ones from your registration before filing maintenance documents. You should also monitor your trademark correspondence and respond promptly to any office actions from the USPTO.
The USPTO’s post registration audit program is a quality control measure that aims to ensure that trademark owners are using their trademarks in commerce with all the goods or services in their registrations. If your registration is selected for audit, you will need to provide additional proof of use for some or all of the goods or services in your registration, or delete them and pay a deletion fee. To avoid losing your trademark rights, you should be prepared for a possible audit by following the tips above.
Contact us today to learn more about the trademark post-registration process or how we can assist you with your intellectual property concerns.