Use It or Lose It! USPTO Enacting Trademark Audit Regarding Usage of Registered Trademarks
The 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.
Additional Requirements Under the New Rules
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.
Trademark Audit Program
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.
Reputational Risk and Legal Exposure: Why New Jersey Businesses Must Manage Them Together
New Jersey businesses must manage legal and reputational risk together because modern disputes play out on two fronts at once: the legal proceeding itself and the court of public opinion, where customers, employees, investors, and business partners often reach conclusions long before a judge or jury has had the opportunity to evaluate the facts. Success […]
Eviction Is Not Always the End: Understanding Post-Possession Rent Claims in New Jersey and New York
No. An eviction does not automatically end a tenant’s obligation to pay rent. Post-eviction rent claims are common because recovering possession resolves who has the right to occupy the premises, but it does not extinguish the tenant’s contractual obligations under the lease. Whether unpaid or future rent remains owed depends on three factors: the lease’s […]
Company Dissolved? Legal and Financial Consequences to Expect
A company is dissolved; legally, it ceases to exist. Accordingly, dissolution results in significant legal and financial consequences. It is a process that must be properly managed to avoid continuing liability. The Corporate Dissolution Process Corporate dissolution is the legal process of formally closing a corporation, paying its debts and distributing the remaining assets. Most […]
The Legal Implications of Signing a Triple Net Lease
A triple net lease is a commercial lease in which the tenant pays the property’s real estate taxes, insurance, and maintenance costs, known as the three nets, in addition to base rent. They are most often used in freestanding retail and office buildings and in large single-tenant industrial properties, with terms that typically run 10 […]
When to Settle and When to Fight: A Litigator's Framework
Every lawsuit comes with a cost, and knowing when to settle a lawsuit is one of the most consequential decisions a business owner will face. Experienced litigators understand how to minimize cost and obtain certainty for their clients. For many business owners, the decision is viewed almost entirely through a financial lens: What will it cost […]
Types of Business Law Services Companies Actually Use
Business law services are legal services that help companies form, operate, transact, protect assets, manage risk, and resolve disputes. The phrase can sound broad because it is broad. A company may need help with entity formation one month, contract review the next, a commercial lease after that, and a business dispute later in the year. […]
No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.
Sign up to get the latest from our attorneys!
Explore What Matters Most to You.
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!
