What is an Audit of a Trademark Registration?

audit trademark registration

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.

What is a Notice of Appeal Filed with the Trademark Trial and Appeal Board (TTAB)?

Notice of Appeal

Filing the Notice of Appeal with the Trademark Trial and Appeal Board (TTAB) is the very first step in the trademark appeal process. You may only file the Notice of Appeal after an examining attorney at the United States Patent and Trademark Office (USPTO) issues a final office action indicating that the refusal to register your trademark has been made final. The purpose of filing the Notice of Appeal is to preserve your right to attempt to convince the TTAB (through the submission of competent evidence and persuasive arguments) that the examining attorney’s final refusal to register your mark is improper and should be overturned. In other words, it informs the TTAB of your intent to challenge the examining attorney’s reasons for rejecting your trademark application.

What is a Provisional Refusal of Protection from the USPTO?

provisional refusal

A provisional refusal of protection is issued by the United States Patent and Trademark Office (USPTO) when a trademark for which an extension of protection is sought doesn’t meet the eligibility requirements for registration on the Principal Register. A provisional refusal is also sometimes referred to as a “nonfinal office action” and is essentially identical to a trademark office action that would be issued by the USPTO in response to a trademark application not filed in accordance with the Madrid Protocol. In other words, “provisional refusal” is just a fancy name given to an office action when a mark is the subject of an extension of protection under Section 66(a) rather than the subject of a trademark application filed directly with the USPTO under Section 1(a), Section 1(b), Section 44(d), or Section 44(e).

What is a Request for an Extension of Time to File a Response to an Office Action?

Request for an Extension of Time to File a Response

It’s extremely common to receive a trademark office action from the United States Patent and Trademark Office (USPTO) after filing a trademark application. You may also receive an office action after filing the Statement of Use or an Amendment to Allege Use. If you don’t file a response that addresses the issues raised in the office action within three months of the office action being issued, then your trademark application will go abandoned.

But what if you can’t file a response by the three-month deadline? What if you need more time to conduct research and to draft an argument to attempt to overcome a major rejection (such as a likelihood of confusion refusal)? Maybe you require some additional time to discuss the office action with the examining attorney in charge of your application? Perhaps you need time to seek the assistance of a skilled and knowledgeable trademark attorney? Whatever the reason, you can file a Request for an Extension of Time to File a Response to the office action.

What is a Post-Registration Office Action from the USPTO?

post-registration office action

The United States Patent and Trademark Office (USPTO) will issue a post-registration office action if you file a trademark registration renewal or maintenance document that doesn’t satisfy all of the legal requirements. Here’s a list of documents that could trigger an office action if filed incorrectly: