Trademarks: USPTO To Begin Random Audits Of Declarations Of Use


This new rule is essential to read for those who work with US trademarks. It has just been highlighted to me by one of our associates in the United States.

When I read about this new rule, "jail" was the first thing that appeared in my mind. In many jurisdictions of the world, a person who knowingly issues a false affidavit will be liable to criminal prosecution.

Hence, I have never dared to doubt any declaration of use which I encountered in my professional life. How can a trademark owner issue an affidavit for properly using one and the same trademark for more than ten different goods and still have a good sleep?

The days of clear consciousnesses have ceased, but when studying the respective new USPTO rule more closely, it is not as bad as it sounds. You may end up losing your registered trademark, but you will not necessarily be imprisoned.

But first to the facts:

The USPTO herein enacts a permanent audit program whereby it will conduct random audits of the ... affidavits filed each year in which the mark is registered for more than one good or service per class. The USPTO anticipates that upon initial implementation it would conduct random audits of up to approximately 10% of such affidavits and may increase the percentage going forward, depending on results and as resources allow.

More specifically, the USPTO will - in addition to the usual one specimen of use per class currently required - require the owner of the trademark to provide additional proof of use in commerce.

How does this work in practice? Will I be required to supply as many examples as I have goods in my trademark?

No, you do not have to supply as many examples as you have goods in your trademark.

The good news is that there will again be a random test. Initially, there must be proofs for only two more goods/services:

In a selected case, the USPTO will issue an Office action specifying the goods/services for which additional proof of use is required. Upon implementation, the USPTO anticipates requesting proof of use for two additional goods/services per class in the initial Office action. Thereafter, the owner may be required to submit proof of use in commerce for additional goods/services. ...

And what happens if I am unable to provide sufficient proof for use of these goods/services?

Nothing spectacular will happen. Just delete those goods if you know that you did not use your trademark for these goods:

The Office action will also advise trademark owners to delete those goods/services for which they are unable to provide the requested proof of use.

However, that is not all. USPTO will request that you let your pants down:

It will further advise owners to delete all (other) goods/services not in use in commerce because the Office may issue subsequent actions requiring proof of use on some, or all, remaining goods/services.

And if I do not reply at all? Will it improve my situation by ignoring the USPTO?

Of course not. You will then lose your entire trademark:

If no response to the Office action is filed within six months of the issuance date of the Office action, or before the end of the statutory filing period for the section 8 or section 71 affidavit, whichever is later, the USPTO will cancel the entire registration

Any further doubts or questions?

Check it out yourself: