The United States Patent and Trademark Office (USPTO) is implementing a permanent audit program for certain U.S. federal trademark and service mark registrations. The audit will request certain additional information from trademark owners to verify the accuracy of claims that a trademark is in use in commerce in connection with the goods/services listed in the registration.
The program will be implemented effective March 21, 2017.
Registrations subject to audit
Only certain registrations will be subject to the audit. The USPTO will conduct random audits of the combined total of affidavits of use filed each year for registrations in which the mark is registered for more than one good or service per class. (In order to maintain a registration, an affidavit of use must be filed between the fifth and sixth year of registration and between every ninth and tenth year of registration.)
Current law requires that a trademark owner submit proof of use of the mark in commerce for only one good or service per class in an affidavit of use. In a selected case under the audit program, the USPTO will issue an Office Action specifying the goods/services for which additional proof of use is required.
If the trademark owner responds (i) within six months of the issuance date of the Office Action, or (ii) before the end of the statutory filing period for the affidavit of use, whichever is later, but is ultimately unable to provide the requested information, the USPTO would deem the affidavit unacceptable as to the goods/services to which the requirement pertained and will cancel such goods/services from the registration.
If (i) no response to the Office Action is filed within six months of the issuance date of the Office Action, or (ii) before the end of the statutory filing period for the affidavit of use, whichever is later, the USPTO will cancel the entire registration, unless there is time remaining in the six-month grace period allowed for filing an affidavit of use. If time remains in the grace period, the owner may file a complete new affidavit of use, with a new fee and grace-period surcharge.
McGrath North’s trademark attorneys and staff can assist your organization with responding to any Office Action/audit request. If a McGrath North attorney files the affidavit of use on your organization’s behalf, the USPTO will send any Office Action/audit request to your McGrath North attorney. Please contact the IP Group with any questions.