Preparing for Random Trademark Registration Audits

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.

• Single-class registrations with four or more goods or services in the class, for example:
  • Umbrellas, duffels, wallets, backpacks, briefcases, suitcases, and handbags in Class 18
• Multi-class registrations in which at least two classes have two or more goods or services, for example:
  • Notebooks, stickers, paper napkins, erasers, and pens in Class 16
  • Umbrellas in Class 18
  • Mugs, cups, and bottle openers in Class 21
  • T-shirts in Class 25

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:

• When you file a Declaration of Use, gather evidence for every product or service in your application. You now need to be even more careful when filing a Declaration of Use. Check for use and assemble specimens showing the mark as used on each item in your registration before you file the Declaration of Use. Then before you file, delete the goods for which you are not using the registered mark in the United States. That way, you will be prepared to defend your registration if it is selected for a random audit.
• Make sure you have a bona fide intent to use your mark on all of the goods or services in your application. You must have a bona fide intention to use your mark in order to get a valid registration. That is true even if the U.S. application is based on a home country registration or the Madrid Protocol. You should keep documentary evidence of your plans and steps to use the mark for the specified products in the United States, such as business plans, marketing plans, or correspondence with potential distributors or manufacturers.

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).

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