CALL US: 206.533.3854
CALL US  206.533.3854
AEON Law logo full color transparent
By KG Shreyas Thimmaiah - Own work, CC BY-SA 4.0, https://commons.wikimedia.org/w/index.php?curid=66367223

USPTO Increases Trademark Proof-of-Use Audits

USPTO
Cracks down on unused trademarks;
More audits coming

The US Patent and Trademark Office (USPTO) is cracking down on unused registered trademarks.

Unused marks “clutter up” the trademark registry and make many potentially valuable marks unavailable for others to use.

In a 2012 pilot audit program, the USPTO found that 51% of the audited registrations couldn’t verify previously claimed use.

The USPTO requires trademark owners to show use of their marks by providing one specimen of use per class at six years and ten years after the initial registration date.

In 2017, the USPTO introduced a Post Registration Proof of Use Audit Program. Audits will now be doubled to 5,000 per year.

A trademark registration can be audited if:

  • The owner filed a six-year or ten-year declaration of use for the mark, and

  • The registration covers at least:

    • One class with four or more goods or services each, OR

    • Two classes with two or more goods or services each.

Trademark owners or their trademark attorneys will get notified if the marks have been selected for an audit. If this happens, the mark owner will be required to provide additional proof of use of the marks, such as:

  • Information

  • Exhibits

  • Affidavits or declarations

  • Additional specimens

Acceptable proof of use specimens can include:

  • Photos of the marks used on a tag or label attached to the products

  • Photos of packaging for the products, if the products are visible through the packaging

  • Photos of the marks used on retail store or restaurant signs

  • Screenshots of websites on which the products or services are sold

If the owner fails to respond to the audit notice, or if the additional proof of use is considered insufficient by the USPTO, the mark(s) will be cancelled.

The USPTO has also proposed fees of $100 each for each good or service deleted for failing the audit.


More information is available here.

Related Articles

Supreme Court: No Time Limit on Monetary Recovery in Copyright Cases

The US Supreme Court has ruled in favor of Sherman Nealy, a record producer who sued Warner Music for copyright infringement over a 2008 song by ...
Read More

Patent Office Requests Public Comment on AI Prior Art

The US Patent and Trademark Office (USPTO) has published a request for comment (RFC) on “how AI could affect evaluations of how the level of ordinary skills ...
Read More

FTC Bans Employee Non-Compete Agreements

The Federal Trade Commission (FTC) has voted to approve a proposed rule that would ban employers from using non-compete agreements with nearly all employees. The ...
Read More

Let's work together.

Contact us to set up a meeting with an attorney or team member.

Stay Informed

Sign up to receive Patent Poetry—a monthly roundup of key IP issues in our signature haiku format. Four articles (only 68 syllables); zero hassle.

SECTORS

HIGH
TECHNOLOGY

Artificial Intelligence

Blockchain & Cryptocurrency

Computer Technology & Software

Consumer Electronics

Electrical Devices

MECHANICAL
& PRODUCTS​

Cleantech

Mechanical Devices

Consumer & Retail Products

Hardware & Tools

Toys & Games

LIFE SCIENCES
& CHEMISTRY​

Biotechnology

Chemical Compounds

Digital Health

Healthcare Products

Pharmaceuticals

BRANDING
& CREATIVE​

Books & Publications

Brand Creation

Luxury Products

Photography & Video

Product Design

SERVICES

PROTECT

DEAL

DEFEND