Patent & Trademark Blog - Copyrights, Cyberlaw, Trade Secret Law

Does Trademark Protection Last Forever?

Trademarks are an important part of a business. They are the best way to protect the identity of the source of particular products or services. They also help consumers easily recognize a specific company as the manufacturer or source of a product and encourage customer loyalty.

Once a trademark is registered, it is protected from use and misuse by others, and it acquires characteristics similar to other types of property. These important protections lead many trademark owners to ask – how long exactly does a trademark last?

As a general rule, a trademark owner should anticipate having enforceable protections so long as the mark is being used in commerce. However, the amount of time a trademark is enforceable depends primarily on the laws where the trademark was registered.

Duration of Trademark Protections in the U.S.

If you registered your trademark in the United States, there is a chance that you could enjoy federal protection indefinitely. The key is to ensure your trademark is renewed properly. In the U.S., trademark renewal is required every ten years. In addition, there needs to be an indication that your trademark is being actively used between the fifth and sixth year after it was registered. If your mark is still actively used within this period, the registration can be renewed when you reach the 10-year anniversary of the registration.

To properly renew your trademark, the owner is obligated to file specific maintenance documents that are required by the United States Patent Trademark Office (USPTO) within the adequate time frames. In this manner, the trademark owner needs to satisfy the legal requirements for the trademark to be renewed.

Maintenance Filing Necessary for a Trademark Renewal

Below is a list of the required maintenance filings to ensure you can extend the protections of your trademark. If you fail to supply these requirements, you expose yourself to the risk of losing your trademark rights. The necessary maintenance files include:

A Declaration of Use (also referred to as a Section 8 Affidavit) – this document confirms that you are still using the trademark as it was originally issued.
A Declaration of Incontestability (also referred to as a Section 15 Affidavit) – this document states that your trademark cannot be challenged.
An Application for Renewal (also referred to as a Section 9 Affidavit) – this document needs to be filed as you are approaching the 10-year anniversary of the registration. This document serves to confirm that you are still using the mark as it was initially issued and confers ten additional years to your initial registration.

Ramifications

If you fail to provide the necessary maintenance documents to the USPTO, your trademark could be cancelled. To prevent this from happening, you need to keep an active registration by filing maintenance documents when it is required by law. This is incredibly important because if your trademark registration is cancelled, it cannot be reinstated. You would need to apply for a trademark registration again. While the USPTO does provide a six month grace period to renew your trademark registration, an extra fee will need to be paid.

Overseas Trademark Protection

Unfortunately, registration of a trademark in the U.S. does not provide international protection. Indeed, a trademark registered in the U.S. confers protections in the U.S. only. If you would like to secure trademark protection in other countries, you have two options to consider. First, you could apply for a trademark in your country of choice, where you want the mark to be protected. Second, you could apply for protection through a Madrid Protocol application, European Union, or other regional trademark.

Have Questions About the Protections Afforded by a Trademark? Contact an Experienced Trademark Lawyer in Los Angeles Today

If you are interested in applying for a trademark, or currently have a trademark that you believe needs to be renewed, take action by contacting an experienced trademark attorney at Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm with offices in Los Angeles, Santa Monica, and Beverly Hills. For further information or to schedule a consultation with one of our highly experienced trademark attorneys, please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

When Does Registered Trademark Protection Begin?

When Does Registered Trademark Protection Begin?

If you have successfully filed a trademark application with the United States Patent and Trademark Office (USPTO), you may be wondering, “When will the trademark protections actually begin? Is it automatic after applying?” The answer is that it depends on how your trademark is being used.

Trademark Utilized in Commerce

If you are currently using your trademark in interstate commerce, you initially incurred rights at the outset of this use. Trademark rights arise from actual use of the mark. Indeed, trademark registration is not required for ownership of an enforceable mark.

However, there are multiple advantages to having a registered trademark. Primarily, registration includes the exclusive right to use the mark on or in connection with the goods/services listed in the registration, as well as, the presumption of nationwide ownership. Federal registration also provides notice to the public of your claim of ownership of the mark.

Despite the advantages of registration, it could take between seven months to one year to actually claim registered status. For example, if everything goes smoothly with your trademark application, the USPTO will eventually publish your trademark in the Trademark Official Gazette. The process does not end there.

Immediately following publication, the USPTO provides a 30-day window for other companies and/or individuals to file objections to your trademark. If an objection is raised, it will protract the registration process and prevent you from actually enforcing your registered mark until the objection is resolved. If, on the other hand, no objections are raised, your trademark application will mature into an official federal trademark registration. Once this maturation period occurs, you will have all of the legal rights that associated with the registered mark.

Trademark Not Currently Used in Commerce

If you register a trademark that you intend to be used in commerce, but is not actually used in commerce currently, you may need to wait between eight months and nearly three years before you have trademark registration status.

There is a separate submission protocol for trademarks not currently used in commerce. Businesses utilize this protocol in an effort to get a head start on the registration process and, most importantly, it is desirable for your brand to be safeguarded by federal trademark law as soon as possible.

Allowance Process

The allowance process is highly similar for trademarks currently in use in commerce and those which the owner has an intention to use. If the mark is approved after the publication period, the USPTO will issue a Notice of Allowance (NOA). An NOA is not an official registration, Instead, it indicates you have survived the 30-day opposition period and that the mark is entitled to registration. If the mark is not currently being used in commerce, you will be required to file a Statement of Use (SOU) within the required timeframe. You can further prolong this process by filing extension requests for up to 30 months.

Have Questions About the Trademark Registration Process? Speak to an Experienced Trademark Lawyer in Los Angeles Today

If you are interested in applying for a federal trademark in the United States, or you currently have a trademark that you believe is being infringed by another individual or company, now is the time to take action. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm with offices in Los Angeles, Santa Monica, and Beverly Hills. For further information or to schedule a consultation with one of our highly experienced Los Angeles trademark attorneys please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.

How can you obtain a European Union trademark for your business?

Registering Your Trademark in the EU

If you own or are part of a company that conducts a significant amount of business in the European Union, you should consider obtaining an international trademark for your business enterprise. Similar to a U.S. trademark registration, it is possible to obtain an international trademark that can be utilized to protect the reputation, products, and/or services of your business and help to mitigate the risk of infringement by a foreign entity or individual.

If you are interested in obtaining an EU trademark, properly navigating the complexities of the EU trademark registration process can be quite intimidating and features an array of potential pitfalls. Hence, you should thoroughly weigh the costs and benefits of securing the EU trademark to ensure it is worth your time and resources.

Cost of Obtaining a Trademark in the EU

Obtaining a trademark in the EU is not free and requires an investment in both time and money. Specifically, the cost for a one-class trademark application submitted to the European Union Intellectual Property Office is €850 euros, which translates to $990 USD. If you choose to apply for a trademark in two classes, the cost will increase.

The Madrid Protocol

If you do not want to go through the complex process of registering your mark with the EU, you could consider filing a trademark application through the Madrid Protocol. The Madrid Protocol is a treaty that enables a trademark application to be filed in multiple member countries all at once. However, it is important to note that nations participating in the Madrid Protocol treaty are not in a targeted region, such as the European Union. Instead, nations in the Madrid Protocol span the globe. It is also important to note that even if you pay a single fee to file your application through the Madrid Protocol, each participating country has its own registration fee. These factors are what make the EU registration process potentially more attractive and cost-effective.

Benefits of Retaining an Experienced Trademark Attorney

If you are interested in obtaining a trademark in the EU, it makes sense to also invest in a skilled and knowledgeable trademark attorney to help guide your business through the registration process, the complex legal jargon and the nuances of the application form. The advantages of using an experienced lawyer far outweigh the expense. For example, an experienced trademark lawyer in Los Angeles can conduct a clearance search of the EU trademark register prior to filing your application to ensure there are no pre-existing registrations that could potentially prohibit your trademark from being eligible for registration. Such knowledge can save you a number of large fees and time.

If you are ready to begin the process of registering your trademark in the EU, take action by contacting the highly reputable Omni Legal Group at 855.433.2226 to schedule an appointment. We are a premier Patent, Trademark, and Copyright law firm with offices in Los Angeles, Santa Monica, and Beverly Hills. www.OmniLegalGroup.com

Has Your Patent Been Infringed?

A Step by Step Guide

If you believe another individual or company is infringing on your patent, one of the first steps to take is to compile relevant information about the type of infringement that is taking place. The relevant information should include details on how the alleged infringer is adversely impacting your business and try to conduct a general calculation of all the damages you have suffered as a result of the infringement.

Contact an Experienced Patent Attorney

Primarily, it is in your best interest to seek the counsel of a reputable Los Angeles patent attorney as soon as possible. Omni Legal Group is recognized as one of the premier patent law firms in Los Angeles and has extensive experience filing and protecting patents on behalf of their clients. One of Omni Legal Group’s attorneys can guide you through potential steps, such as those discussed below, that may best address the wrongful conduct.

Contact the Alleged Infringer

A next step is to try to contact the alleged infringer to make them aware of the alleged infringement. This communication should be limited to informing them of your patent rights. A date-specific deadline for their respond should also be provided. If the alleged infringer fails to respond or inadequately responds within the timeframe provided, you should escalate the matter.

File a Complaint

With the help of your patent attorney, a litigation strategy may be formed. At the outset, a complaint may be drafted and filed in a federal district court to initiate the legal proceedings. Once filed, the complaint will need to be served to the alleged infringer. This date of service will then begin to toll the deadline by which the accused must file a response to the complaint.

Potential Settlement

After the alleged infringer is served, there will be an opportunity to try and resolve the dispute before the case goes to trial, which is strongly encouraged by the attorneys at Omni Legal Group encourage. For example, many federal courts require the parties to engage in a pre-trial mediation or settlement conference to try and reach an amicable resolution. Having an experienced and knowledgeable patent attorney on your side can pay dividends during any dispute resolution proceeding since they can guide you through the process and help assess whether a settlement offer is reasonable or not.

If you believe your patent has been infringed, take action today by contacting the highly reputable lawyers at Omni Legal Group. Whether you hold a design patent, utility patent, or plant patent, we can help protect your rights and hold the infringing party accountable for their conduct. For further information or to schedule a consultation, please contact our office today at 310.276.6664 or visit www.OmniLegalGroup.com to learn more.

What is the new Fast Track Appeals Pilot Program for patents?

The New Fast Track Program for Patent Appeals

If you applied for a patent and your application was denied twice, you retain the option to file a formal appeal of the examiner’s decision with the Patent Trial and Appeal Board (PTAB). Generally, the appeals process can be time-consuming and is rife with inefficiencies. Fortunately, the U.S. Patent and Trademark Office launched a new, temporary pilot program to try and improve the adjudication of appeals filed with the PTAB.

The new program, known as the “Fast Track Appeals Pilot Program” went into effect on July 2, 2020. Since it is in a fledgling stage, the pilot program is limited to only 125 patent appeals per quarter.

Why the USPTO Launched the Pilot Program

The USPTO launched this new pilot program primarily due to the popularity of its Track I Prioritized Examination Program for patent applications. Under the Track I program; an applicant has the ability to file a petition with the USPTO for expedited prosecution when filing a new application. However, this process requires paying an additional fee and is limited to patent applications (not appeals). Despite the additional expense, the Track I program is extremely popular. For example, in 2019, close to 3 percent of the patent applications were filed under the Track I program.

As a result of the popularity of the Track I program, the USPTO decided to establish the Fast Track Appeals program as an analogous process that would provide patent applications on appeal a similar expedited time frame.

How To Participate in the New Pilot Program

If you are interested in participating in this new patent appeal pilot program, an applicant must file a petition and pay a fee totaling $400. The petition may be filed any time after the notice of appeal is filed and the PTAB has docketed the appeal. However, it is important to note that your application is not eligible for this program if it was granted any other type of expedited status.

If your petition is granted, the PTAB will attempt to adjudicate your appeal within six months from the date the petition was granted. This is much faster compared to the typical time necessary to adjudicate an appeal. For example, the average appeal typically takes at least 15 months or more to adjudicate.

Pilot Program Only In Effect for Limited Duration

The fast track pilot program is expected to be in effect for around one year, or until 500 appeals are accepted, whichever occurs sooner. Though, the USPTO stated it may consider continuing the program past this limit, or may modify the program, depending on how well-utilized it is by applicants.

Have Questions about a Patent Application or Patent Infringement? Speak to an Experienced Patent Attorney Today

If you have questions about patent law or a patent application, now is the time to act and consult with the highly reputable Omni Legal Group. Whether it is a provisional patent, non-provisional patent, design patent, utility patent, or plant patent application, you can always expect the patent lawyers at Omni Legal Group to provide you with the care and attention you deserve. All of our attorneys are registered with the USPTO.

For further information or to schedule a consultation with a leading patent lawyer in Los Angeles, please contact the highly trusted Omni Legal Group at 310.276.6664 or visit www.OmniLegalGroup.com to learn more. We possess the knowledge, resources, and experience to assist you in your efforts to secure and protect your patent.

How do you report trademark infringement?

Steps to Report Trademark Infringement

It is an all-too-common scenario – you are surfing the Internet searching your company and your products when you stumble upon another business using a name or logo that is very similar to yours and reaping financial benefits from that very similar name or logo. If you find yourself in this situation, your mind may be flooded with questions and concerns, including: who should I report this apparent trademark infringement to?

Take Time to Assess the Situation

You may be surprised to learn that the first rule of handling a potential trademark infringement is to do nothing. For example, you should NOT contact the company. Also, you should NOT send an angry or agitated message through any social media platforms. Instead, you should immediately contact an experienced and knowledgeable trademark attorney. Why? Because a trademark lawyer can assist you in evaluating your legal rights and the best path forward.

What Constitutes Trademark Infringement?

Trademark infringement occurs when someone who is not the established owner of a trademark uses your mark, or one very similar to your mark, in connection with goods and services similar or related to those offered by you in an unauthorized manner. It is also important to understand that infringement occurs when the other party utilizes the trademark in a manner that would cause the following:

Consumer confusion;
Marketplace deception; or
An error regarding the source of the goods and/or services.

Intent Does Not Matter

The intention behind the infringement is irrelevant. Whether or not the imposition occurred on purpose, a trademark owner still retains the right to defend their trademark from potential confusion in commerce from its continued misuse. That being said, if the infringement is willful, the trademark owner may be entitled to additional remedies.

How To Report Trademark Infringement

You can report an allegation of trademark infringement by sending a cease and desist letter to the infringing party. The objective of sending such a letter is to potentially try and reach an amicable settlement with the infringing party prior to escalating the matter to filing a lawsuit in federal or state court.

In addition to sending a cease and desist letter, you could seek assistance through the platform where the infringement is taking place. For example, if the infringement is occurring on a third-party platform such as Amazon, Shopify or Facebook, you have the option to utilize the resources facilitated by those platforms.

Filing a lawsuit is another option of dealing with trademark infringement. It is important to understand that the primary purpose of trademarks is to limit the risk that consumers will be unnecessarily confused in commerce. As a result, the key to victory in trademark lawsuits often focuses on demonstrating marketplace deception, regardless of whether the infringement was intentional or not.

If you can successfully establish that willful infringement took place, you would likely be eligible to receive compensatory damages and reimbursement for attorney fees.

In an instance where you have become aware of infringement via a trademark application, you can also file a Notice of Opposition with the United States Patent and Trademark Office (USPTO). In such instances, your objective is to block the registration of an infringing mark.

Benefits of Retaining a Trademark Attorney

If you are looking to take action to protect your mark, then you should consider retaining the services of an experienced trademark attorney. An attorney can help you in navigating the complex trademark application process and most importantly assist in protecting your trademark from potential infringement and damage.

The reputable Omni Legal Group, is comprised of a highly respected legal team that can help you by conducting the necessary research and steps to protect your respected trademark. For further information or to schedule a consultation please contact Omni Legal Group at 310.276.6664 or visit www.OmniLegalGroup.com to learn more.

How does a business protect its brand from infringement by a third-party domain name?

Trademark Violation – Challenging a Domain Name

The protections afforded to a trademark owner are not limited to the owner’s business and brand. Those protections extend to the domain name for the website of your business. As a result, if you become aware of another business attempting to use your domain, or strikingly similar, domain, you may be able to file a formal dispute.

Domain Disputes on the Rise

It is becoming increasingly common for businesses to discover domains that are using their company information. In certain circumstances, a third party may have intentionally registered a domain using your business information in an attempt to simply profit from the domain. Basically, they register the domain in the hopes that you will find it and offer compensation in exchange for the third party selling you the domain rights. When this situation arises, trademark owners possess the right to take these domains from third parties engaging in “cybersquatting” (i.e. retaining a domain name in an effort to profit from it).

Domain Name Dispute Resolution Policy

When a domain name is registered, the Uniform Domain Name Dispute Resolution Policy (UDRP) is a mandatory arbitration process that must be utilized by the domain owner. The UDRP enables trademark registration owners to file complaints against domains that are improperly using their trademark. If the dispute is successfully resolved, the domain can then be transferred to the rightful trademark owner.

If you have reason to believe that someone is cybersquatting on a domain name that infringes on your registered trademark, you may be able to initiate legal action to obtain the rights to that domain. Here are some of the steps to file a domain dispute:

You need to choose the service through which you will file a formal domain complaint (e.g., the World Intellectual Property Organization).
Once selected, you will need to decide the number of panelists that will review the complaint.
Pay the necessary filing fees. Please note that the fees for a UDRP complaint fluctuate depending on the resolution service selected and the number of panelists appointed.

Filing a Domain Complaint

A domain complaint typically features three key elements that you must prove in order to be successful:

The trademark and domain are confusingly similar,
Why the current domain holder has no rights in the domain, and
The domain registration was done in bad faith.

Without these key points, the chances of the complainant’s success are slim.

When your complaint is filed with the arbitration service, an initial review will be conducted. The domain holder then has 20 days to file a response to your complaint. If they fail to respond, the panel will proceed with an evaluation of your complaint. If the domain holder does respond, the panel reviews the response and forwards its final decision regarding the matter to the arbitration service within 14 days. Overall, this process will take between 4-5 months to be resolved.

If your complaint prevails, the domain holder will be ordered to modify or release the domain name to you. If your complaint is not successful, the domain remains in the custody of the original registration owner.

Need Help with a Trademark, Copyright or Patent? Contact the Reputable Omni Legal Group Today

If you are concerned about a domain holder cybersquatting, it is imperative that you consult with an experienced and knowledgeable trademark lawyer as soon as possible. Omni Legal Group, is comprised of a highly respected legal team that can help you by conducting the necessary research and steps to protect your intellectual property. For further information or to schedule a consultation please contact Omni Legal Group at 310.276.6664 or visit www.OmniLegalGroup.com to learn more.

Tips on How to Obtain and Protect Your Intellectual Property

When you are building a business, it is important to establish an extensive intellectual property portfolio consisting of your registered trademarks, copyrights, and patents. Why? Because these are valuable assets that protect your products and branding from competitors. In addition, they represent your brand and often generate goodwill with consumers by developing your company’s reputation. Considering the value of your IP, you need to take affirmative steps to protect your IP. Here is some sound advice on how to effectively protect your IP rights.

Clear and Register Your Trademark with the USPTO

It is extremely important to select a strong trademark. This means you need to find a business name, unique logo, and catchphrase that is not immediately descriptive or generic for the goods and/or services that you offer under the trademark.

This strategic choice is most advantageous in that it can decrease the likelihood that another company may coincidentally use the same mark for similar products or service offerings. If you are not sure where to begin when selecting a strong trademark, it is in your best interest consult with an experienced and knowledgeable trademark lawyer to discuss your options. Retaining the services of a trademark attorney can also help expedite the process since it is their expertise to conduct clearance searches to determine which of your possible trademarks will have the greatest chance of successfully obtaining a registration.

Be Patient and Diligent

Once you select a strong trademark and submit the application, the timeline to achieve registration is generally between 8-10 months. Yes, you read that correctly. It can take close to a year to successfully register a trademark. Hence, why it is so important to be patient and diligent in your pursuit of valuable IP. Patience and persistence are also important because there is a chance that the United States Patent and Trademark Office will deny your application. You could even encounter opposition from a third party.

When your application is filed, it will take around three months for the initial review to be conducted by an examining attorney. From there, if your application is not denied or challenged, it will be forwarded for a publication period. During this period, which is usually thirty days, other parties have the opportunity to oppose your application should they have grounds to believe a registration may infringe on their trademark.

Following publication, your application returns to the examining attorney for a final review. Depending on the initial filing basis of your application, you will need to prove use of your mark for the registration certificate to be officially issued.

As you can see, getting a trademark registered is a fairly detailed and arduous process.

Be Prepared for a Similarly Complex Process to Obtain a Copyright

In addition to registering your trademark, it is important to obtain a copyright for your unique goods, services, and/or works. When you have a copyright, it protects creative works, including:

Writing
Photography
Audio
Video
Other forms of art or original expression.

However, it is important to understand that a copyright is somewhat limited. It does not protect an overarching idea within a work. Instead, a copyright is effective in safeguarding the expression of your idea in a particular medium. In addition, your copyright registration can help prevent unauthorized copying of an author or an artist’s creative works. Furthermore, it entitles the owner of the copyright to compensatory damages if an infringement occurs after your copyright is registered.

Federal copyright applications are filed with the US Copyright Office and, much like the trademark registration process, can be time-consuming and is fairly complex. That is why it is in your best interest to consult with an experienced and knowledgeable copyright lawyer.

Have Questions? Contact Omni Legal Group Today

For further information or to schedule a consultation with a leading IP lawyer in Los Angeles, please contact the highly reputable Omni Legal Group at 310.276.6664 or visit www.OmniLegalGroup.com to learn more. We possess the knowledge, resources, and experience to assist you in your efforts to secure and protect your IP.

How to Enforce and Protect Your Trademark Effectively

Trademark owners often mistakenly believe that once their trademark is successfully registered, they are good to go and do not need to take any other action. It is an error made with surprising regularity by new trademark owners. Unfortunately, this is not accurate.

Here is the reality – when you register a trademark with the U.S. Patent and Trademark Office (USPTO), the maintenance responsibilities fall on you. This means that you need to take steps to protect your trademark from infringement. As a result, trademark owners need to be proactive and ensure they have an effective enforcement program in place that is ready to be deployed.

Here is another reality – the scope of your rights is largely dependent on lengths to which you are able to enforce your trademark determines the scope of their rights within that registration.

To protect your trademark effectively, you need to have a program in place that involves consistent monitoring of your mark and regular policing and enforcement within your chosen sector of the economy.

When it comes to monitoring your trademark, you should invest in setting up a service devoted to monitoring incoming applications to the USPTO database. These services notify you if any new applications are extremely similar to your mark and enable you to take action against any that may infringe upon your trademark rights.

In addition to effective monitoring, you also need to establish an enforcement regimen that can be deployed quickly and will ultimately protect your trademark rights. In order to police and protect your trademark, you need to develop a strong understanding of the potential types of infringement that could occur. For example, there are different forms of infringement – incidental infringement and nefarious infringement.

Thus, rigorous and consistent enforcement is key, and as you have probably noticed that an effective enforcement regimen cannot be done by a single person. You need to invest in the resources that will allow you to effectively monitor and police your mark while affording you the time to focus on growing your business.

If you have questions about the scope of your trademark rights or need to discuss a potential infringement matter, contact the reputable Omni Legal Group to schedule a confidential case review at 855.433.2226. We are one of the preeminent trademark law firms in Los Angeles and have earned a reputation for providing effective legal advice for trademark applicants, trademark owners, inventors, and other innovators. You can be rest assured that the skilled attorneys with Omni Legal Group will give you the time and attention you deserve. For further information please visit www.OmniLegalGroup.com.

Why should trademark registrants prepare for a heightened level of scrutiny upon renewal of their marks?

Overview of the Trademark Renewal Audit Program

If you registered a trademark and are looking to renew the registration, it is important to be prepared for a heightened level of scrutiny. Why? Because the United States Patent and Trademark Office (USPTO) established a program requiring certain trademark registrants to do more than simply renew their trademark and substantiate their continued use of the items listed in their trademark application, or applications. The new program is an audit whereby the USPTO is requiring trademark registrants to ensure that every item listed is being actively sold in connection with the registered trademark.

New Audit Program Revealing Inaccurate Trademark Applications

The USPTO launched the audit program in November of 2017. Since its launch, the USPTO discovered that around 50 percent of registrants needed to delete at least a portion of their listed goods and services. However, it is worth noting that the registrations flagged as needing to be amended were created prior to the launch of this audit program. As a result, there is a good chance that the trademark owners did not review their registrations carefully to ensure that every item listed is being sold actively in connection with the registered trademarks.

What to Expect If You are Selected for a Trademark Audit

Not every trademark owner is going to be subjected to an audit. According to the USPTO, the audits are conducted randomly. In addition, the audit program is currently limited to registrations for which a registrant submitted a renewal filing.

If your mark winds up being selected for an audit, you will receive a “Post-Registration Office Action” notice from a specialist or staff attorney with the USPTO. This notice will then be recorded in the registration’s file in the Trademark Status & Document Retrieval database.

How to Effectively Respond to an Audit

If your mark is selected for an audit, your response needs to have two key components:

Evidence that your trademark is currently used in commerce. All of your goods and service utilizing the trademark need to be accounted for in your response.
A formal statement that is accompanied by a signed declaration or affidavit. Here is a sample statement:

“The owner/holder was using the mark in commerce on or in connection with the goods and/or services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted proof of use, during the relevant period for filing the affidavit of use.”

What Happens If the Audit Raises Red Flags

If the USPTO determines that your response failed to meet the requirements of the audit and your goods and/or services remain in the registration without acceptable proof of use, expect to receive a second Office Action requesting you provide sufficient proof of use for all remaining goods and/or services.

The response time for an audit is currently six months from the issuance of the Office Action.

Key to Prevailing an Audit – Detailing Active “Commercial Use” of All Goods and Services Claimed in Your Registration Prior to Filing Your Renewal

The best advice to ensure you prevail in a USPTO audit is to work with your Los Angeles trademark attorney and come up with a strategy for thoroughly vetting each and every item listed in your registration before filing.

If you need assistance with a trademark renewal audit, contact the reputable Omni Legal Group at 855.433.2226 to schedule a confidential case review. We are a premier Los Angeles trademark law firm with offices in LA, Santa Monica, and Beverly Hills. Our team of experienced Los Angeles trademark attorneys specialize in protecting your intellectual property and work tirelessly to secure your patents, trademarks, and copyrights. www.OmniLegalGroup.com.