“Good to know” series.
Dear Friends,
This is another article of the series “Good to Know.” It is about intellectual property, of course. In the articles of this series, we always talk about topics of practical value that can help owners and managers of trademarks. In this article, we discuss a post-registration audit of the use of trademarks.
The United States Patent and Trademark Office (USPTO) has recently intensified its practice of conducting audits on trademark registrations following the filing of maintenance documents, such as a Declaration of Continuous Use under Section 8 or a combined Declaration of Continuous Use and Application for Renewal under Sections 8 and 9. Although the USPTO maintains that these audits are conducted randomly, a significant number of registrations appear to be subjected to this process.
Under these audits, the USPTO typically requires registrants to submit additional proof of use for certain goods or services listed in the registration, specifically for those for which proof of use was not provided when the maintenance document was initially filed. It is important to note that registrants are not required to submit proof of use for every good or service listed in the registration when preparing and filing the maintenance documents. However, during an audit, the USPTO may issue an Office Action requesting further evidence of use for selected goods or services.
The potential downside of these audits is the financial and procedural burden they impose. If the registrant cannot provide sufficient proof of use for the requested goods or services, they are given the option to delete these goods or services from the registration. However, this deletion comes at a steep cost—a deletion fee of $250 per class. This fee, effectively serving as a penalty, underscores the importance of careful preparation and review before filing maintenance documents.
To mitigate the risks associated with these audits, it is prudent for trademark owners to thoroughly evaluate whether their marks are still in use for all the goods and services listed in their registration. Any goods or services for which the mark is no longer in use should be proactively deleted at the time of filing the maintenance document to avoid the risk of audits, penalties, and additional service fees.
The US law firm in charge prioritizes our clients’ interests by proactively addressing these concerns during the preparation of maintenance filings. As part of our process, we engage with clients to determine whether any goods or services should be removed to ensure compliance and minimize the risk of costly audits and penalties. This thoughtful approach helps safeguard our clients’ trademark rights while avoiding unnecessary expenses.
I hope this article provides valuable insights for trademark owners and IP portfolio managers alike.
Kind regards,
Dr. Andrea Pennacchia LLM
