Use It Or Lose It: USPTO To Conduct Post-Registration Trademark Use Audits

In Short

The Action: The United States Patent and Trademark Office ("USPTO") may now issue post-registration Office actions requiring evidence of use on multiple goods or services for Section 8 and 71 trademark renewal affidavits.

The Effects: The USPTO may cancel registrations in whole or in part where a registrant fails to provide requested evidence of use on additional goods and services listed in a registration.

Looking Ahead: Owners of registrations should ensure that they can support renewal filings with evidence of use on all goods and services in the registration.

Trademark owners take note: Affidavits to renew your U.S. trademark registrations may be getting a closer look. On March 21, 2017, the United States Patent and Trademark Office ("USPTO") implemented a new rule aimed at clearing the trademark register of marks no longer in use. Specifically, the USPTO may cancel or limit a registration if the registrant does not provide evidence of use on additional goods or services listed in the registration when requested.1

The rule is part of a broader effort by the USPTO to clear the trademark register of so-called "dead wood," i.e., marks that are not actually in use in commerce for some or all of the goods or services listed in a registration. It is a departure from longstanding USPTO practice, which previously required trademark owners to submit proof of use for one good or service when renewing registrations, regardless of how many different goods or services in each International Class were covered by the registration.

Now, registrants may be required to submit additional information, including exhibits, affidavits, declarations, or additional specimens, "as may be reasonably necessary for the USPTO to ensure that the register accurately reflects marks that are in use in commerce in the United States for all the goods/services identified in the registrations," unless excusable nonuse is claimed.2 The USPTO will conduct random audits of approximately 10 percent of Section 8 and Section 71 renewal affidavits, a percentage that may increase over time.3 The rule is intended to help the USPTO maintain a more accurate and reliable register and reduce the costs and burdens associated with challenging marks that may no longer be in use, although opponents of the rule have claimed that it will disproportionately affect owners of foreign registrations.4

According to the USPTO, the change reflects ongoing concerns that the register does not accurately depict marks in use in commerce in the United States for the goods/services identified in registrations, which comes at a cost to the public. "The public relies on the register to determine whether a chosen mark is available for use or...

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