An audit of a trademark registration may occur after the owner of the registration files a trademark registration maintenance or renewal document with the United States Patent and Trademark Office (USPTO). The USPTO may perform an audit to determine whether the mark is actually in use in connection with all of the products and/or services identified in the maintenance or renewal document. The purpose of the USPTO’s audit program is to assess and promote the accuracy and integrity of both the Principal Register and Supplemental Register. In other words, the USPTO wants to ensure that trademark owners are not fraudulently maintaining and renewing their registrations for products and services they are not currently providing in the USA.
When Does a Trademark Registration Audit Occur?
An audit of a trademark registration can be triggered by the filing of one of the following maintenance or renewal documents:
- Section 8 Declaration of Use (which may have been combined with the Section 15 Declaration of Incontestability)
- Section 71 Declaration of Use (which may have been combined with the Section 15 Declaration of Incontestability)
- Section 8 and 9 Renewal
Although the USPTO claims that it randomly selects registrations for audit, I have personally found that audits happen more frequently when (1) the registration recites ten or more products/services in a single class, and (2) the owner declares in the maintenance or renewal document that the mark is in use in connection with all products/services in the class.
If your registration is selected for audit, the USPTO will send you a post-registration office action indicating that it cannot accept your maintenance or renewal document until you comply with the audit requirements.
What is the Deadline for Responding?
Generally speaking, you have six months from the issuance date of the post-registration office action to respond to the audit. If you fail to do so, your trademark registration will be canceled in its entirety. This is true even if the maintenance or renewal document you submitted otherwise complies with all legal requirements, or if the audit only pertains to products/services in one class and not the other classes listed in your registration.
What Does the Audit Request?
Although audits can differ slightly from registration to registration, the following is a very typical example of an audit. Let’s say your trademark registration lists “shirts; pants; shorts; scarves; socks; jackets; coats; shoes; hats; dresses; skirts; underwear; ties; mittens,” in Class 25. When you filed your Section 8 Declaration of Use, you declared that your trademark was in use in connection with all of the products listed in your registration. As part of the Section 8, you properly submitted specimens showing legitimate commercial use of your trademark, but only for “shirts.”
Although you technically complied with all of the legal requirements for the Section 8, the USPTO randomly selects your registration for audit and sends you a post-registration office action. The office action indicates that in order for the Section 8 to be accepted, you must provide proof of use of your mark for “socks” and “dresses.”
How Do I Comply with the Audit?
There are two ways in which you can satisfy the requirements of the audit:
Option #1 – If you are actually using your mark in connection with the audited products, all you have to do is use the “Response to Post-Registration Office Action” form on the USPTO website to (1) submit proper additional specimens demonstrating such use, and (2) provide a declaration and verification that you were using your mark in commerce with the audited products during the relevant time period for filing the maintenance or renewal document (which is already part of the form). The USPTO will then accept your maintenance or renewal document and your registration will remain active for all products/services.
Option #2 – If you are unable to provide proof of use of your mark for the audited products, you must use the “Response to Post-Registration Office Action” form to delete the audited products from the registration. In addition, you are required to (1) delete all other products/services from the registration for which proof of use cannot be provided, (2) submit proof of use for all remaining products/services in the audited class(es), (3) pay the required deletion fee, and (4) pay any deficiency surcharge that may be applicable. The USPTO will then accept your maintenance or renewal document and your registration will remain active for the products/services that were not deleted.
Please note that if you fail to meet all requirements for either option, the response to the audit will be considered incomplete and the USPTO will issue a second post-registration office action. This could result in having to pay additional deletion fees and/or deficiency surcharges as part of your response to the second office action.
Do You Need Any Assistance?
I’m experienced US trademark attorney Morris Turek. If you need some assistance with satisfying the requirements of a trademark registration audit, l would be glad to review the situation free-of-charge and to consult with you about the best way to comply with the audit. I can be reached by phone at (314) 749-4059, via email at morris@yourtrademarkattorney.com, or through the contact form located at the bottom of this page. I look forward to hearing from you soon.