Scarinci Hollenbeck, LLC
The Firm
201-896-4100 info@sh-law.comFirm Insights
Author: Scarinci Hollenbeck, LLC
Date: June 21, 2017
The Firm
201-896-4100 info@sh-law.comThe U.S. Patent and Trademark Office (USPTO) has been seeking to clean up the federal trademark register by removing trademark registrations that are no longer in use. As part of this effort, the USPTO may now require a trademark audit seeking additional proof of use to verify the accuracy of claims that a trademark is in use in commerce in connection with particular goods/ services identified in the trademark registration.
Trademark owners have always been required to take steps to keep their registrations in force, namely by filing specific documents with the USPTO at regular intervals. The first such trademark filing, called a Declaration of Use, is due before the end of the 6-year period after the registration date or within a 6-month grace period thereafter. A Declaration of Use consists in part of a sworn statement that the registered trademark is in use in commerce due to special circumstances that excuse such nonuse and is not due to any intention to abandon the trademark registration.
Federal trademark registrations issued on or after November 16, 1989, remain in force for 10 years and may be renewed for 10-year periods. Accordingly, between the 9th and 10th year after the registration date and every 10 years thereafter, the owner must file a Combined Declaration of Use or Excusable Nonuse and Application for Renewal. Failure to file the required IP maintenance documents during the specified time periods will result in the cancellation of the U.S. trademark registration.
To show continued use, registered owners were previously required to provide a list of the goods/services recited in the trademark registration on or in connection with which the trademark is in use, as well as a single specimen of the trademark per class of goods or services. Under the amended regulations, the USPTO may require the submission of information, exhibits, affidavits or declarations, and such additional specimens of use as may be reasonably necessary for the USPTO to verify the accuracy of claims that a trademark is in use in commerce in connection with all of the goods or services listed in the registration.
In support of the heightened scrutiny, the USPTO cites a two-year audit program that suggested that many registered marks were not actually being used in connection with the goods or services identified in the registrations. The USPTO randomly selected 500 registrations for which Declarations of Use and Renewal affidavits were filed. In 51 percent of the registrations selected for the pilot, the trademark owners failed to supply additional verified proof of use on specific goods or services for which use in commerce was initially claimed.
As the USPTO explained in the , the changes will help facilitate the USPTO’s ability to assess and promote the integrity of the trademark register.
The USPTO is also launching a new audit program to conduct random audits of Declaration of Use and Renewal affidavits in which the mark is registered for more than one good or service per class. The agency initially plans to conduct random audits of up to approximately 10 percent of the affidavits received each year and may increase the percentage going forward. If flagged for trademark audit, owners may be required to provide additional proof of use in the nature of information, exhibits, affidavits or declarations, and specimens showing use in commerce.
In light of the amendments, trademark registrants should be prepared to provide evidence of use for all claimed goods and services when filing a Declaration of Use or Renewal application. Accordingly, it is recommended to keep accurate records of use of each covered goods or services and to periodically review the sufficiency of such evidence.
Do you have any questions? Would you like to discuss the matter further? If so, please contact me, David Einhorn, at 201-806-3364.
No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.
*** The original article was featured on Bloomberg Tax, April 28, 2025 — As a tax attorney who spends much of my time helping people and companies who have large, unresolved issues with the IRS or one or more state tax departments, it often occurs to me that the best service that I can provide […]
Author: Scott H. Novak
On January 28, 2025, the Trump Administration terminated Gwynne Wilcox from her position as a Member of the National Labor Relations Board (NLRB or the Board). Gwynne Wilcox, a union side lawyer for Levy Ratner, was confirmed to the Board for an original term in 2021 and confirmed again for a successive five-year term expiring […]
Author: Matthew F. Mimnaugh
Breach of contract disputes are the most common type of business litigation. Therefore, nearly all New York and New Jersey businesses will likely have to deal with a contract dispute at least once. Understanding when to file a breach of contract lawsuit and how long you have to sue for breach of contract is essential […]
Author: Brittany P. Tarabour
Closing your business can be a difficult and challenging task. For corporations, the process includes formal approval of the dissolution, winding up operations, resolving tax liabilities, and filing all required paperwork. Whether you need to understand how to dissolve a corporation in New York or New Jersey, it’s imperative to take all of the proper […]
Author: Christopher D. Warren
Commercial leases can take a variety of forms, which is often confusing for both landlords and tenants. Understanding the different types, especially the gross lease structure, is important when selecting the lease that best suits your needs. One key distinction between lease types is how rent is calculated and paid. This article addresses the two […]
Author: Robert L. Baker, Jr.
Over the past year, brick-and-mortar stores have closed their doors at a record pace. Fluctuating consumer preferences, the rise of online shopping platforms, and ongoing economic uncertainty continue to put pressure on the retail industry. When a retailer seeks bankruptcy protection, a myriad of other businesses are often impacted. Whether you are a supplier, customer, […]
Author: Brian D. Spector
No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.
Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.
Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.
Let`s get in touch!
Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!