In early 2017, the US Patent and Trademark Office (USPTO) began an initiative to “audit” 10% of all maintenance filings for existing trademark registrations.  If you own a federally registered trademark, maintenance filings must be filed with the USPTO between the fifth and sixth year following registration, and every ten years following registration thereafter.  Historically, these filings were processed with little evaluation by trademark examiners.


We are now beginning to see these filings receive greater scrutiny under the USPTO’s new audit program.  All that is technically required to file a Declaration of Use, which is a document necessary to maintain the registration, is a verified statement that the mark remains in use for the goods and/or services specified in the registration, and a “specimen” of use for one of those goods or services.  Given this, many trademark registrants were able to maintain registrations listing numerous goods and services simply by showing use for a single good or service.


Now, if you are one of the lucky ten percenters being audited, the USPTO examiner will require proof (meaning: specimens) that your mark is actually in use for every single good and service listed in the registration.  If the USPTO does audit you, it will issue an office action requiring this proof within 6 months.  If you don’t respond to the office action, the entire registration will be cancelled.  If you are not able to show proof of use for each of the registered goods and services, those that have been abandoned (that is, the mark is not currently being used for those specific goods or services and you have no intent to resume that use) will need to be deleted from the registration.


So, what does this mean for you?  As has always been the case, it’s best to ensure that the registered mark is actually being used for all of the goods and services identified in the registration.  This is because US trademark rights fundamentally are derived from your use of the mark.  When it comes time to file a Declaration of Use for your trademark, it is worth 1) evaluating which goods or services for which the mark is still in use, and which should be deleted from the registration, and 2) filing a specimen for each good or service for which the mark is still in use.  Doing so will help avoid additional costs or time spent responding to audits, or in the worst-case, from having your registration being cancelled.  


One of our experienced trademark attorneys is always available to help you determine how to best maintain your valuable trademark registration and ensure that all maintenance filings are properly prepared.


Posted by Michael Salvatore