Getting Help for Your Trademark Renewals Just Became Imperative; Post-Registration Trademark Use Audits Now Conducted by USPTO

By Kenneth L. Sherman

On March 21, 2017, the United States Patent and Trademark Office (USPTO) implemented a new order to enhance their examination of trademark registrations up for renewal and to remove registrations that are no longer in use. The new order may result in the cancellation or limitation of a trademark registration if the Registrant fails to provide requested evidence of the trademark’s use in commerce on all the identified goods or services listed in their trademark registration.

What exactly does this mean? Previously, “specimens,” or evidence of your mark used in connection with the goods/services listed in your trademark application or registration were not required for each specific item listed in your identification of goods/services. While a trademark is required to be used with each and every good or service listed, Registrants could get away with submitting only one specimen that would cover a broad list of goods/services in their trademark registration.

Begun as a pilot program, the USPTO now plans to conduct random audits of approximately 10 percent of trademark renewal affidavits. The audit will require that trademark registrants provide evidence of use for all associated goods and services when filing trademark renewals.

PURPOSE OF THE NEW RULE

The new rule serves the stated purpose of removing “dead wood” or unused trademark registrations from the trademark register. The intent of the new rule is to improve the accuracy of the register and reduce the expenses associated with challenging marks that are no longer used in interstate commerce. According to the USPTO, the change reflects ongoing concerns that the trademark register maintained by the USPTO does not accurately depict marks being used in commerce in the United States for the goods/services identified in registrations.

The new rule follows an internal pilot program that revealed that a majority of registrations cannot verify use in connection with all of the covered goods/services. Of the 500 registrations selected in the pilot program, a whopping 51 percent failed to verify use in connection with the particular goods/services claimed in the registration!

WHAT DOES THIS MEAN FOR YOU?

The USPTO just became much more strict on trademark registrations and renewals.

Let’s take an example: You have an apparel company and your trademark registration covers the following Identification (ID) of Goods – Clothing, namely, t-shirts, dress shirts, pants, shorts, hats and shoes. Your trademark is up for renewal and is being audited as part of the USPTO’s new program.

Previously, you might have gotten away with submitting only one specimen showing your trademark in association with t-shirts when submitting the required documents to renew your registration. With the new rule, you would be required to show your mark being used on every item listed in your ID of goods/services. In the example above, you would have to provide evidence of use of your mark on t-shirts, dress shirts, pants, shorts, hats and shoes. If you can’t, the Trademark Office may cancel or limit your registration.

GUIDELINES/REQUIREMENTS

The USPTO’s new rule establishes an audit program that performs random audits of Affidavits of Use filed for registrations covering more than one good or service per class. If a registration is audited, an Office Action is issued that specifies the goods/services for which additional proof of use is required. Registrants are instructed to delete the goods/services if it cannot show use in commerce. The USPTO anticipates requesting proof of usage for two additional goods/services per class, but may also require proof of use in commerce for additional goods/services.

Also stated under the new rule, if a registrant cannot show proof of use in response to the Office Action, the USPTO considers the renewal affidavit unacceptable and will cancel the registration as it applies to those goods/services. Furthermore, if a registrant does not respond to the Office Action within the six-month response period, or before the end of the statutory filing period for the affidavit, the USPTO will cancel the entire registration.

SUMMARY

Many “do-it-yourselfers” make the mistake of filing trademark applications with enormous identification of goods/services that are meant to encompass the broadest possible coverage for their trademark, without consideration of what specimens will be required by the USPTO to support their registrations. While this nearly always causes problems during prosecution of a trademark application, such a mistake will become a liability even after a trademark is successfully registered. Once your mark is registered, you may think you’ve already made it past the most difficult part! Don’t lose your trademark due to the nuances and requirements of the Trademark Office.

Trademark attorneys are more necessary now than ever to properly prepare and file trademark applications so that applicants avoid falling into the trap of a poorly-written identification of goods/services that are not written correctly to broadly cover their goods and services and taking into account future inspection of a trademark registration by the USPTO.

Additionally, many trademark registrants fail to recognize mandatory renewal dates and documents required to maintain the registration of their trademark. As part of this new rule, the Trademark Office may also issue Office Actions that require a response from the Registrant.
At Sherman IP, we assist our clients in properly preparing and filing their trademark applications that align with their business goals and meet the strict guidelines and requirements set forth by the Trademark Office. Once the trademark application is filed, status updates, notifications or requirements pertaining to your trademark application or registration are provided when new information is available, at no additional cost to you. You’re our most valuable asset, and we’re on your team.