Recently, the United States Patent and Trademark Office (USPTO) announced an update to how it selects registrations for audits during the post-registration maintenance process. In 2017, the USPTO introduced an aggressive audit program, which requires trademark registrants to be extra vigilant when renewing their trademarks and helps to ensure that every item listed in a current registration is actively being sold or offered in connection with the trademark in the United States.
Instead of selecting random registrations for audit, the USPTO will instead begin conducting directed audits. In line with the USPTO’s crackdown on fraudulent filings, these directed audits will target trademark owners with questionable submissions for filings that satisfy the use in commerce requirement. This may involve, for instance, the submission of specimens that appear to be digitally altered or consist of printouts from a specimen farm website. The USPTO may also request further information, including proof of use in commerce for any goods or services covered by the registration.
The update departs from the USPTO’s practice of random audits of any renewals for registrations that include either:
- At least one class of goods containing four or more goods or services listed in that class; or
- At least two classes of goods or services, each with at least two or more goods or services listed in the class.
Best Practices
A federal trademark registration can be an extremely valuable asset that is capable of outlasting patent and copyright protections; however, in order to take advantage of that benefit, a trademark owner must also satisfy the post-registration requirements set out by the USPTO. These hurdles are not, by any means, difficult to achieve, but they can be a bit tricky to navigate without proper guidance.
In light of the USPTO’s increased scrutiny of fraudulent trademark filings, trademark registrants should never submit doctored specimens or specimens from questionable sources, such as specimen farms. Trademark registrants should also:
- Regularly self-audit usage of their marks to ensure registrations reflect current and continued use of marks on the listed goods and services, even between maintenance filings.
- Maintain consistent usage of registered marks and periodically save evidence of use from the web, on packaging, and on related collateral so they are prepared for maintenance filings or in the event their registration or use is challenged.
If you have any questions regarding the content of this alert, please contact Deb Peckham, partner, at dpeckham@barclaydamon.com; Sara Dorchak, counsel, at sdorchak@barclaydamon.com; Kat Delos Reyes, associate, at kdelos@barclaydamon.com; or another member of the firm’s Trademarks, Copyrights & Licensing Practice Area.