The US Patent and Trademark Office (USPTO) requires trademark owners to support their trademark registrations by providing one specimen of use per class, at both 6 years and 10 years after the trademark registration date. So, for instance, if you have a registration covering ‘clothing, footwear and headgear’ in class 25, providing the US trademark office with an example of the mark being used on a baseball cap will be sufficient to support the registration in respect of all goods covered by the registration, despite the fact a specimen of use had only been provided in respect of one item of headgear.
In November 2017, the USPTO introduced a ‘Post Registration Proof of Use Audit Program’. The program aims to promote the accuracy and integrity of the US trademark register, as it allows auditors to cancel audited registrations which have unsubstantiated use claims, and to remove goods and/or services from trademark registrations where owners have not provided proof of use of the mark on those goods and/or services.
Which US trademark registrations can be audited?
A US trademark registration may be audited if it meets the following criteria;
- The owner has filed a 6 year or 10 year declaration of use in respect of the registration; and
- The registration covers, at least, either;
- one class with four or more goods/services; or
- two classes with two or more goods/services.
How will I know if my US registration has been selected for an audit?
You or your trademark representative will receive a notification stating that the registration has been selected for audit. The USPTO notification will detail two additional goods or services for each audited class, and will ask that the trademark owner provide proof of use for each good or service detailed in the notification by a particular deadline.
My registration has been audited, will I be able to keep by US registration?
The answer depends on the response filed in relation to the audit notification. If you file a response to the audit notification ahead of the deadline and the response meets all requirements, including proof of use, the USPTO will issue a notice of acceptance and your registration will be maintained. However, if no response to the audit notification is filed by the deadline, or the response is insufficient, the US registration could be cancelled in its entirety.
It is important to remember that proof of use is evidence which clearly shows how the owner is using the trademark in commerce on the goods, or in connection with the services specified in the registration. Note that the audit criteria for proof of use is are stricter than the criteria for a specimen in connection with the 6 year or 10 year declaration. By way of example, proof of use could include;
- Photographs showing the trademark being used on a tag or label affixed to the goods;
- Photographs showing the trademark being used on packaging where the goods are visible through the packaging;
- Photographs showing the trademark being used on retail store signage or on restaurant signage;
- Screenshots of a website showing the trademark being used in relation to the sale or advertising of services.
Beware! If the response does not include acceptable proof of use for, or merely deletes the audited goods or services, the USPTO will issue a second office action requiring proof of use for all of the remaining goods or services in your registration for which you have not provided proof of use, and set a deadline for responding to the second office action. So simply deleting the audited goods/services will not address the audit requirements. If after reviewing any response filed in relation to the second office action, there are still goods or services remaining in the registration for which you have not provided acceptable proof of use, the USPTO will issue a third and final action advising that those goods or services will be deleted from your registration.
So, if you are not able to provide proof of use for the audited goods and/or services in commerce in the US, in order to try and avoid a potential second office action, consider;
- deleting the audited goods and/or services for which you cannot provide proof of use;
- deleting any other goods and/or services for which you cannot provide proof of use; and
- providing proof of use for the remaining goods or services covered by the registration.
While the audit program will create additional work for those audited, its intention is a de-cluttering of the US trademark register, which will hopefully assist brand owning applicants to clear their marks. It could also ultimately strengthen the protection and value of having a US trademark registration.
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.