The United States Patent and Trademark Office (USPTO) has launched a new program that will require some trademark owners to submit more “specimens” (i.e., proof of use) and information than was required in the past. As a result, trademark owners should be prepared to prove use of their trademarks in connection with all of the goods and services covered in a declaration of use filed under Sections 8 and 71 of the Lanham Act.
Summary of the audit program
In order to maintain a federal trademark registration, a trademark owner must file a “declaration of use” with the USPTO between the 5th and 6th anniversaries of registration, and every 10th anniversary of registration. As part of this filing, the registrant alleges use of its mark in U.S. commerce in connection with goods and services covered in its registration, and submits proof of use (such as a photograph of its trademark on its goods).
The current rules only require registrants to submit one specimen per class of goods/services in connection with their declarations of use, even if the class covers multiple different goods or services. The rules do not require the USPTO to require additional specimens or other information in order to verify that the mark is in use on other goods/services listed in the registration.
Through the new audit program, the USPTO will conduct random audits of declarations of use for marks registered for multiple goods or services within the same class. For those trademark owners selected, the USPTO will issue an Office Action specifying the goods/services for which the trademark owner must submit additional proof. The USPTO anticipates requesting proof of use for two additional goods/services per class in the initial Office Action, but may subsequently require the trademark owner to submit proof of use for further goods/services.
Who will be affected?
Trademark owners who file declarations of use for registrations that include more than one type of goods or services per class are subject to audit. The new audit program will no doubt affect U.S. trademark registrants, and in particular trademark registrants who have based their U.S. registrations on corresponding foreign trademark applications/registrations that contain lengthy descriptions of goods/services permitted in some other countries that do not require proof of use to secure a registration.
How extensive is the audit?
This is a random audit program. The USPTO anticipates that it will audit up to 10% of the declarations of use filed each year. The percentage may increase going forward, depending on the results of the audit and USPTO resources.
How should you respond when audited?
Trademark owners must respond to the Office Action within six months of the date of the Office Action, or before the end of the filing period to file the declaration of use, whichever is later. Failure to respond within that time period will result in cancellation of the registration, unless time remains in the grace period for filing a new declaration. The additional information or specimens required will be reviewed according to the USPTO’s generally accepted standards for reviewing trademark specimens, which will remain the same.
Prepare proactively
Although registrants are only required to submit one specimen of use per class with a declaration of use, they are not prevented from voluntarily providing evidence of use for all goods/services listed in the registration. Doing so may require a bit more effort at the time the declaration of use is filed, but will reduce the likelihood of receiving an Office Action, and will avoid a scramble to find evidence of use in the event of an audit.
Shoko Naruo is an associate in Thompson Coburn’s Intellectual Property group.