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March 21, 2017

ALERT: Trademark Owners Beware: The U.S. Trademark Office Has A New Audit Program

If your company has trademarks that are registered with the U.S. Patent and Trademark Office (PTO), a new audit program can put your registrations at risk if you are not careful.

Amendments to the federal rules of practice governing trademarks are effective March 21, 2017. Under the revised rules, the PTO will be authorized to conduct random audits of Section 8 Affidavits and Declarations of Continued Use or Excusable Nonuse where the mark in question is registered for more than one good or service in a single class. Trademark owners selected for an audit may be required to provide additional proof of use of their marks in commerce.

Background
For a trademark registration to remain valid, the owner must file a declaration or affidavit attesting to the continued use of the mark in commerce.  This filing must be made between the fifth and sixth years after the date of the registration, and again in the year before the end of every ten-year period after the registration date. When filing the affidavit or declaration, the owner is required to submit one specimen for each class in the registration that shows how the mark is used in commerce.

New Audit Program
The new rules do not change the requirement that a declaration or affidavit include one specimen of the mark per class, but they authorize the PTO to request proof of the use of the mark for additional goods or services within a class (for instance, a registration in Class 3 for glass cleaners and oven cleaners). For those marks selected for audit, the PTO will issue an office action specifying the goods or services for which additional proof of use is required and will advise the trademark owner to delete those goods or services for which the owner is unable to provide the requested proof of use.

If the owner responds to the audit request in a timely manner but is unable to provide the requested information for a particular good or service, the PTO will maintain the registration but delete that good or service from the registration. If no response is provided by the deadline, the PTO will cancel the entire registration, unless a grace period applies.

What Should Trademark Owners Do?

Trademark owners should conduct a self-audit to determine if they are indeed using their marks on all of the goods and services listed in their registrations. When filing the Section 8 affidavit, a trademark owner may also consider voluntarily providing evidence of use in commerce for each good or service listed in the registration—including those in the same class. The PTO has stated that if a registrant did so, it would diminish the likelihood that additional proof of use would be required if the mark were selected for audit.

The revised rules also underscore the importance that the PTO places on accurate identification of the goods and services in a registration.  Trademark owners therefore would be wise to review the basic rules governing proper trademark use and the filing of specimens, including the following:

  • Marks should be used as originally registered since a modified mark may not be entitled to the same protections as the original mark. (For example, do not register YAMSTER and then use YAM-STER).
  • For trademarks on a product, the specimen must show the mark as used on or in connection with the goods in commerce. Examples of a valid specimen for a product include a label, tag or other container for the product, or a display associated with the product. 
  • Generally speaking, mere advertising of a product (such as a newspaper ad) would not be an acceptable specimen for a product.
  • For service marks, the specimen must show the mark as actually used in selling or advertising the services, such as newspaper and magazine advertisements, brochures, billboards, handbills, direct mail leaflets and the like. Letterhead and invoices usually are not acceptable specimens for service marks.

For additional information on maintaining the registration of your trademarks or on how the new rules may affect your registrations, please contact Karen A. Jeffers (kjeffers@pullcom.com) or Margaret A. Bartiromo (mbartiromo@pullcom.com). © 2017 Pullman & Comley, LLC.

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