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By: Janet Marvel Pattishall, Mcauliffe, Newbury, Hilliard & Geraldson LLP
The U.S. Patent and Trademark Office (USPTO) is commencing random audits of trademark registrations in which Declarations of Use have been filed to verify that the registered mark is in use on all of the goods and services in the registration. All applicants and registrants, particularly those foreign companies that have filed under the Madrid Protocol or a corresponding home country registration, need to be prepared. If you do not properly respond to the audit request, you could lose your registration, in part or in whole.
BETWEEN THE FIFTH AND SIXTH YEAR AFTER A MARK IS registered, the registrant must file a Declaration of Use attesting, under oath, that the registered mark is in use in U.S. commerce on all the goods or services in the registration. The registrant must also submit a specimen label, product photo, or the like, showing the use of the mark on one product or service in each class in the registration. The registrant must delete any goods and services for which the registered mark is no longer in use.
The USPTO piloted an audit of Declarations of Use a few years ago. It randomly selected 500 registrations for which registrants had submitted Declarations of Use and accompanying specimens of use. In those cases, the USPTO requested that the registrants submit additional specimens for certain goods and services in the registrations. The USPTO found that in over half of the cases selected, the registrants did not or could not show the additional proof of use. Based on this pilot program, the USPTO determined that audits would help maintain the accuracy and integrity of the federal trademark register by removing deadwood (i.e., abandoned) goods and services.
which registrants had submitted Declarations of Use and accompanying specimens of use. In those cases, the USPTO requested that the registrants submit additional specimens for certain goods and services in the registrations. The USPTO found that in over half of the cases selected, the registrants did not or could not show the additional proof of use. Based on this pilot program, the USPTO determined that audits would help maintain the accuracy and integrity of the federal trademark register by removing deadwood (i.e., abandoned) goods and services.
For each audited registration, the USPTO will issue an Office Action after examining the registrant’s Declaration of Use. The Office Action will require the registrant to submit specimens of use for two additional products or services in each class, as appropriate.
The registrant must then either submit additional specimens of use or delete any audited goods or services for which it is not using the registered mark in U.S. commerce. If the registrant deletes any goods or services, the USPTO will, as appropriate, issue another Office Action requiring specimens of use for everything else in the registration. The registrant has six months to respond to each Office Action. If the registrant does not respond, the registration will be cancelled. If the registrant does respond, but does not provide proper specimens of use for some of the goods/services, those goods/services will be deleted from the registration.
Applicants and registrants should do two things to make sure they are ready for audits:
Foreign companies’ trademark applications are often drafted to cover long lists of goods and services, as this approach is dictated by local practice outside the United States. Sometimes, the applicant does not have a bona fide intent to use the mark on everything in the application, or at least a provable bona fide intent. For example, a recent application included wimples, mustache wax, agates, unwrought silver, albs, ascots, chasubles, animal harnesses, wet suits for waterskiing, and horse blinkers. Such unusual and diverse product lines invite questions regarding bona fide intent to use.
Madrid and treaty-based applications and resulting registrations, with long lists of goods, could be a driving factor for the audit program. However, even if you are a domestic applicant, you should take care to include only those goods you actually intend to use the registered mark on, as of the time of filing, in your application, and you should document your intent.
Janet Marvel is a partner at Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP. She protects brands, copyrighted works, and domain names throughout the world. As part of her practice, Janet represents plaintiffs and defendants in a wide variety of disputes involving trademark, copyright, rights of publicity, breach of contract, unfair competition, and false advertising. She has successfully tried cases and litigated around the country in state and federal courts and before the USPTO. Janet writes the comprehensive treatise Hilliard, Welch & Marvel, Trademarks and Unfair Competition (8th ed., 2017, Lexis Nexis); online edition (2017, Lexis Nexis).
To find this article in Lexis Practice Advisor, follow this research path:
RESEARCH PATH: Intellectual Property & Technology > Trademarks > Trademark Counseling & Transactions > Articles
For an overview of the trademark application process, see
> FACTORS TO CONSIDER BEFORE FILING A TRADEMARK APPLICATION
RESEARCH PATH:: Intellectual Property & Technology > Trademarks > Trademark Registration > Practice Notes
For a discussion of the Madrid Protocol, see
> MAINTAINING & RENEWING MADRID PROTOCOL REGISTRATIONS
RESEARCH PATH: Intellectual Property & Technology > Trademarks > International Trademark Considerations > Practice Notes
For more information on Declarations of Use, see
> MAINTAINING & RENEWING U.S. TRADEMARK REGISTRATIONS
For guidance on conducting a trademark audit, either internally or by outside counsel, see
> TRADEMARK AUDITS
RESEARCH PATH: Intellectual Property & Technology > Trademarks > Trademark Counseling & Transactions > Practice Notes