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.