How to Avoid Losing Trademarks to the USPTO Audit Program


The USPTO Audit Program

The U.S. Patent and Trademark Office (USPTO) recently announced that it will conduct random audits of about 10 percent of all post-registration Declaration of Use filings going forward. This is a permanent extension of a pilot program launched by the USPTO in March 2017, following reports of increases in fraudulent claims of use and overly broad listings of goods and services by trademark applicants. The audit program aims to cut out the “dead wood” (i.e., registrations that remain in effect despite a lack of current use of the mark on the listed goods and services) from the U.S. trademark register.

Application of the Program

The USPTO audit program applies to Declaration of Use filings, which are required between the 5th and 6th anniversaries of registration and every 10 years after registration. Although USPTO rules require only one piece of evidence per class, the registrant must also verify in the Declaration of Use filing that the mark is still in use for all of the goods and services listed in the registration.

One out of every 10 of these filings will now be selected for proof of use audits. If a registration is selected, the USPTO will issue an Office Action requiring additional evidence of use for two of the listed goods or services. If the registrant elects to delete the goods or services selected for the audit, or if the additional evidence is deemed insufficient, the USPTO will issue a second Office Action requiring evidence of use for all remaining goods and services. Failure to respond to an Office Action will result in cancellation of the registration in its entirety.

Our Recommendations

To avoid losing trademark rights to the USPTO audit program, our team recommends the following best practices:

  • Limit the goods and services listed in your initial U.S. trademark application to only those that are actually in use (or that will be used within the specified period) in U.S. commerce.
  • Delete all unused and/or outdated goods and services from the registration in each Declaration of Use filing.
  • Include additional evidence of use in Declaration of Use filings to reduce the likelihood of a USPTO audit.
  • 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.
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