by Karin Cao (New York)

In November 2017, the United States Patent and Trademark Office (USPTO) implemented the Post Registration Audit Program. The purpose of this program is to ensure a more accurate trademark register by cancelling registrations not in use in commerce.

How it Works

Trademark owners may be subject to an audit upon filing a declaration of use under Section 8 or Section 71 of the Trademark Act, if their registration includes: (a) at least one class with four or more goods/services or (b) at least two classes with two or more goods/services. If a maintenance registration filing is audited, the trademark owner will be issued an office action requiring them to provide proof of use for select goods and/or services listed on the registration (audited goods/services). If the trademark owner does not respond to the audit, the registration will be canceled. If the trademark owner requests to delete any of the audited goods/services, and there are remaining goods/services in the registration for which proof of use is not of record, they will receive a second office action requiring proof of use for all remaining goods/services. Thereafter, if the trademark owner responds with unacceptable proof of use for any audited goods/services, the Office will delete these goods/services from the registration. A third office action is possible. Therefore, if proof of use for the audited goods/services is unavailable, the trademark owner should delete the audited goods/services and any other goods/services not currently in use.

Costs and Fees

If the trademark owner responds to an audit by deleting goods/services, they will be required to pay a $250 deletion fee (per class) each time goods/services are removed. They may also be subjected to a $100 deficiency surcharge. Specifically, when a trademark owner deletes goods from the declaration after it was filed to correct an inaccurate list of goods with which the mark is in use in commerce, corrections submitted after the grace period for filing the original declaration must be accompanied by a deficiency surcharge.

Response Timing

A response to the audit must be filed within six (6) months of the office action or prior to the sixth (6th) year anniversary of the registration, whichever is later. If a response is not filed, and there is no time remaining in the grace period to file a new declaration of use, the registration will be cancelled. If a response to the office action is not filed by the deadline, but time remains in the grace period, the trademark owner may file a new declaration of use within the grace period. However, filing a new declaration of use will most likely result in another office action, so the trademark owner should make sure to either include proof of use for all goods/services or delete any goods/services on their registration for which they cannot provide proof of use.

The audit program has canceled or removed goods/services from more than half of the audited registrations, trimming deadwood from the register which may otherwise hinder new applications from proceeding to registration. If you require assistance navigating the intricacies of this relatively new audit program, contact us at .

Disclaimer: The information in this blog post (“post”) is provided for general informational purposes only, and may not reflect the current law in your jurisdiction. No information contained in this post should be construed as legal advice from Natter & Associates, P.C., nor is it intended to be a substitute for legal counsel on any subject matter. No reader of this post should act or refrain from acting on the basis of any information included in this post without seeking the appropriate legal or other professional advice on the particular facts and circumstances at issue from a lawyer licensed in the recipient’s state, country or other appropriate licensing jurisdiction.

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