Weekly IP Buzz for the week ending August 2, 2019

Weekly IP Buzz for the week ending August 2, 2019

Here's a summary of interesting developments in intellectual property, technology, social media, and Internet law for the week ending August 2, 2019.

Can Your Trademark Registration Be Audited? | About the Proof of Use Audit Program


In 2017, the United States Patent and Trademark Office (“USPTO”) introduced a new audit program that was designed to remove unused trademarks in order to reflect a more up-to-date and accurate federal trademark register.

The Trademark Registration Audit Program Focuses on Good/Services in Actual Use

Found in 37 C.F.R §§ 2.161(h), 7.37(h), the USPTO audit program randomly selects trademark registrations to be audited in order to determine whether the registered trademarks are actually in use.  In order to prove use to auditors, trademark owners are required by the USPTO to submit proof of use for at least two additional goods or services per registered class, requiring more than the usual one specimen per class as required by declarations of use under trademark law. 

Officially known as the Post Registration Proof of Use Audit Program, the audits are designed to root out trademarks that are not in use for all of the declared goods and services, thereby allowing the removal of classes that are not supported by specimens of use or even for cancellation of entire registrations because trademarks that remain registered, but not in use unfairly blocks the registration of trademarks that may be similar and actually in use.  As such, the USPTO’s audit program promotes a more accurate reflection of the trademarks actually in use with their related goods or services.

Eligibility for Post Registration Proof of Use Audit

Not all trademarks, however, are eligible to be audited.  The USPTO only audits trademark registrations that: 1) have filed a Section 8 or 71 declaration of use, and 2) include at least one class with four or more goods or services OR is registered with two classes of two or more goods or services.

If a trademark registration is audited, the trademark owner will receive notice from a post-registration trademark examiner.  The notice will request that the trademark owner submit proof of use for two additional goods or services within the class required by the examiner.  Qualifying as an office action, the audit will also point out any errors, mistakes, or issues with the declaration as filed by the registrant.  In order to properly respond to the audit office action, the registrant must address any and all issues raised by the post-registration examiner.  To properly demonstrate proof of use, the registrant must submit evidence of the mark as used in commerce with the required goods or services identified by the examiner.  If the examiner deems the response to be satisfactory, the examiner will then issue a notice of acceptance.  If the response is rejected, however, the examiner will issue a second office action.  

It should be noted, that for audits, the proof of use for goods differs from specimens that are required by trademark examiners.  As a general rule, proof of use for goods must meet stricter guidelines than specimens. For example, proof of use must show the mark actually being used in connection with the identified goods instead of simple mockups or designs.  Proof of use for services, however, are the same as specimens.      

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Darin M. Klemchuk is founder of Klemchuk LLP, a litigation, intellectual property, and transactional law firm located in Dallas, Texas. He also co-founded Project K, a charitable movement devoted to changing the world one random act of kindness at a time, and publishes Thriving Attorney, a blog dedicated to exploring the business of the practice of law, productivity and performance for attorneys, and other topics such as law firm leadership and management, law firm culture, and business development for attorneys.

Click to learn more about Darin M. Klemchuk's law practice as an intellectual property lawyer.

Weekly IP Buzz for the week ending July 26, 2019

Weekly IP Buzz for the week ending July 26, 2019