USPTO Enacts Post-Registration Audit Program

Frank Terranella, Esq.

The USPTO has instituted a permanent audit program under which it will conduct random audits of at least 10% of all maintenance and renewal filings to assure that the goods and services claimed are actually in use

As part of the review of the selected filings, in addition to the one specimen of use per class currently required, owners will be required to provide additional proof of use in the nature of information, exhibits, affidavits or declarations, and specimens showing use in commerce. In a selected case, the USPTO will issue an Office action specifying the goods/services for which additional proof of use is required. Upon implementation, the USPTO anticipates requesting proof of use for two additional goods/services per class in the initial Office action. Thereafter, the owner may be required to submit proof of use in commerce for additional goods/services.

The Office action will also advise trademark owners to delete those goods/services for which they are unable to provide the requested proof of use. It will further advise owners to delete all goods/services not in use in commerce because the Office may issue subsequent actions requiring proof of use on some, or all, remaining goods/ services.

If a maintenance or renewal filing is chosen for audit, trademark owners will be afforded the usual six-month response period. If the trademark owner responds, but is ultimately unable to provide the requested information, exhibits, affidavits or declarations, and specimens, the USPTO would deem the filing unacceptable as to the goods/services to which the requirement pertained and will cancel such goods/services from the registration. If no response to the Office action is filed within six months of the issuance date of the Office action, the USPTO will cancel the entire registration, unless time remains in the grace period. If time remains in the grace period, the owner may file a complete new section 8 or section 71 affidavit, with a new fee and grace-period surcharge.

It is anticipated that this program will add additional cost to the maintenance and renewal process for clients. In order to minimize those costs, listings of goods and services should be examined closely and any items that cannot be proven should be removed when the maintenance or renewal is filed.

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