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USPTO Auditing Continued Use of Registered Trademarks

One of my clients received a new type of office action from the U.S. Patent and Trademark Office. It was in response to a declaration of use filed under Section 8 of the Lanham Act to renew its registration for five more years. The USPTO stated it wanted more proof that each item listed on the registration certificate was still in use — even though my client’s filing was accompanied by an affidavit to that effect.

“Really?” the USPTO seemed to say. “Prove the continued use with specimens showing that each branded item is still being sold.”

According to the government, the inquiry was random. It explained that ”[t]he USPTO is performing random audits of US trademark registrations to assess and promote the accuracy and integrity of the trademark register. This registration has been randomly selected for audit to determine whether the mark is in use with all of the goods and/or services identified in the registration.”

“To comply with the audit,” the USPTO added, “you must submit proof of use of the registered mark for two additional goods and/or services per class. If proof of use for the goods and/or services identified is not available, the identified goods and/or services and any other goods and/or services not currently in use should be deleted from the registration.”

For those audited, this means more work. Nonetheless, I like the idea. Registrations that are renewed for all goods and services listed on a certificate — regardless of whether the mark is actually still being used for all such items — wrongly clutter up the trademark registry. Such “zombie” registrations can prevent actual trademark users from registering similar marks in connection with similar goods or services. They also give the registrant the appearance of trademark rights beyond those it actually has.

An audited registry better serves those who qualify for its benefits. It also gives our trademark registration process more credibility. I think the result is worth the effort.

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