As US trade marks holders will know, the US Patent and Trademark Office (USPTO) requires validation of trade marks at 6 and 10 years following registration. This is achieved by lodging evidence showing that at least one item included in each class of the registration is in use in US commerce. An accompanying declaration confirms that the all other goods and services of the registration are also in commercial use in the United States.
For several years, the USPTO has administered a Proof of Use Audit Program (Audit Program), which requires trade mark owners to submit proof of use for at least two additional goods or services per class. Any trade mark registration subject to a maintenance (6yr) or renewal (10yr) filing that consists of either:
- one class with four or more goods or services; or
- at least two classes, with two or more goods or services,
may be randomly selected under the Audit Program.
According to the USPTO, more than half of audits to date have led to at least partial cancellation of goods and services. With this in mind, and to ensure the integrity of the US Trademarks Register, the USPTO recently announced that it will double the number of audits to around 5,000 per year.
What happens to registrations selected under the Audit Program?
If your trade mark registration is chosen to be audited, you or your trade mark attorney will receive an office action from the USPTO.
Trade mark owners selected for the Audit Program will be required to provide evidence of current commercial use in the United States of two specific goods or services claimed in the maintenance or renewal declaration as “in use.” The trade mark owner is not able to choose the additional goods or services for which to prove use.
If an owner cannot prove use of either of the USPTO’s chosen items, it will be necessary to file a response requesting deletion of those goods or services. In this case, the USPTO will issue a further request for evidence showing commercial use in the US of every remaining good or service covered by the trade mark. Any items for which the owner cannot prove use will be deleted from the registration, and if no response is filed to the USPTO’s requests, the trade mark may be cancelled.
What does this mean for owners of US Trade mark registrations?
The Audit Program is designed to ensure that the US Trademarks Register protects only trade marks which are actively used in United States commerce.
We recommend that owners of US trade marks carefully review all goods and services contained in their registration when maintenance or renewal is due. Owners should delete goods or services not currently in commercial use in the United States, and should also be prepared to submit evidence in support of all goods and services covered by the registration.
While it no doubt increases the integrity of the US register, and arguably the value of remaining US trade mark registrations, owners selected to participate in the Audit Program may face increased expenses or other consequences for maintaining overly broad specifications. For this reason, a proactive approach to US maintenance and renewal is paramount.
Example: John’s trade mark for PANJIRI registered in 2012 in respect of various goods in class 30. In 2018, John lodged the requisite maintenance declaration stating his trade mark remained in use in US commerce in respect of all the goods of his registration. He submitted evidence showing his garlic puree bearing the PANJIRI trade mark.
The PANJIRI mark was selected for the Audit Program. John received an Office Action requesting that he submit evidence showing use of the trade mark in respect of two more items of his registration, being carraway seeds and ginger. John was able to prove that he was selling ginger in the US under the PANJIRI brand, but he had no evidence of carraway seeds. John responded to the Office Action by requesting deletion of carraway seeds, and submitting evidence in relation to ginger.
Because John could not show use of both items the subject of the first Office Action, a further Office Action issued requiring John to show commercial use of his remaining goods in class 30, being salt, pepper, tomato sauce and star anise. John was unable to show any such use, and as a result his registration was ultimately restricted to garlic puree and ginger only.
Had John properly considered his use of PANJIRI and deleted his unused goods during the maintenance procedure, he would not have incurred the time and expense of responding to two Office Actions.