Seattle Trademark Lawyer

In 2012, the U.S. Patent and Trademark Office launched a pilot program to audit claims of continued trademark use when registrations were renewed. The purpose of the audit was to detect fraud or ignorance of the use-in-commerce requirement. Of the 500 registrations audited, 253 (51%) failed to demonstrate trademark use.

In 2017, the Trademark Rules of Practice were amended to authorize the USPTO to require additional evidence of use when a registration is renewed. Since then, almost 5,000 registrations have been audited. Again, more than half resulted in the amendment to delete goods and services from the registration — presumably, because the owner could not establish use in commerce.

A mark is used in commerce for goods when the mark is place on the goods, and the goods are sold or transported in United States commerce. For services, a mark is used when it is displayed in the sale or advertising of the services, and the services are rendered in commerce. Use in commerce is a prerequisite for most applicants to get a registration in the first instance, and is required for all registrants to renew.

Going forward, the USPTO plans to audit approximately 5,000 registrations per year. Audited marks are selected at random from renewed registrations that include four or more goods or services in a single class or two or more goods or services in two or more classes.

Trademark owners should expect to be audited. This means that upon renewing their registration, they should ensure that every good and service included in their renewal is both in use and can be demonstrated to the USPTO’s satisfaction. For goods, this usually means photographs showing the mark on a tag or label affixed to the good, including through hang-tags attached to a good; and for services, it usually means copies of brochures, signs, or website screen shots that show the mark being used to promote the service, and include the URL and date the page was accessed or printed.

The USPTO’s audits don’t change the substantive requirement that a mark be used in commerce. However, it broadens the need to prove that each listed good or service is actually being used. While random, audits should no longer be a surprise. To the contrary, owners should plan for them by confirming that each and every good and service included in the renewal is still being used. Any good or service that is not in use should be deleted. And owners should gather and safeguard any hard-to-find proofs so they are not deleted, recycled, or lost in the ordinary course of business.

As a result of these efforts, trademark owners should not be disadvantaged by an audit, and the Principal Register should more accurately reflect marks that qualify for the expanded protection that registration provides.