Does your trademark registration identify multiple
goods or services in a single class? If so, you could be subject to
a random audit to make sure you are using your mark with all the
goods and services claimed.
New Final Rule Effective February 17, 2017
On January 19, 2017, the United States Patent and Trademark
Office ("USPTO") published a new final rule, effective
March 21, 2017, establishing a permanent random audit program for
affidavits or declarations of use or continued use for marks with
more than one good or service per class.
10% of Section 8 and 71 Declarations Will Be Subject to
Specifically, under the new rule, the USPTO will conduct random
audits of up to 10 percent of the section 8 and Section 71
affidavits filed each year for registrations with more than one
good or service per class. In the cases selected for audit, the
USPTO will issue an Office Action specifying the goods/services for
which additional proof of use is required. The USPTO anticipates
requiring proof of use for two additional goods/services per class,
and depending on the response, may then issue additional Office
Actions requiring more specimens. Trademark owners will have up to
six months to respond to the Office Action generated by the random
audit, and in response the trademark owner can either submit the
required proof of use, or delete those goods/services for which the
mark is not being used. If the trademark owner fails to respond to
the Office Action, the USPTO will cancel the entire registration
unless time remains in the grace period for the section 8 or 71
New Rule Issued After Two-Year Pilot Program
In issuing the final rule, the USPTO explained that it had
previously implemented a two-year pilot program to assess and
promote the accuracy and integrity of the trademark register. In
the pilot program, the USPTO randomly selected 500 registrations
for which section 8 and section 71 affidavits had been filed. The
owners of the selected registrations were required to submit proof
of use for additional goods/services per class in addition to the
required one specimen per class and to verify use of the mark with
the additional goods/services. In 51% percent of the registrations
selected for audit in the pilot program, the trademark owners
failed to supply the additional verified proof of use.
Specifically, the owners of 35% of the registrations selected for
audit asked that the USPTO delete certain goods/services that the
owners had initially claimed were in use with the mark. And 16% of
the registrations were cancelled because the owners failed to
respond to the requirement for additional proof (or due to other
Thus, if you are a trademark owner with registrations that
identify multiple goods/services in a single class, you need to be
prepared to prove use for all the goods/services listed if you get
selected for the random audit.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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