|Do any of your renewed trademark registrations list more than one good or service in a single class? If so, that trademark could be subject to a random audit by the United States Patent and Trademark Office (“USPTO”). |
Pleased with the results of its two-year pilot program, the USPTO is now poised to make good on its threat to clear “deadwood” from the Register, currently overflowing with more than 5 million active trademarks.
The audit, set to launch soon establishes a permanent random audit program for trademarks with more than one good or service per class.
TEN PERCENT OF RENEWED TRADEMARK REGISTRATIONS WILL BE AUDITED! Let’s say you have a registered trademark in Class 25 that covers the following goods: “Women’s clothing namely, pants, shorts, tops, jackets, skirts, dresses, pantsuits, coats, sweaters, vests, belts, gloves, pajamas, nightgowns.”
You recently renewed it at the 5 or 10 year mark, stating use was continuing for all listed goods, and thought you could forget about the trademark until the next renewal date. That used to be true, but not anymore.
If your trademark is selected for audit, The USPTO can chose two goods or services from your listed goods or services and demand proof of use for those two (say “pajamas” and “vests” in our example). Depending on your response, the USPTO may then issue an additional Office Action requiring more and better proof.
Trademark owners will have up to six months to respond and can either submit the required proof of use, or ask for deletion of those goods or services for which the mark is not being used.
IF THE TRADEMARK OWNER FAILS TO RESPOND, THE REGISTRATION WILL BE CANCELLED! In the 2-year pilot program, the USPTO randomly selected 500 registrations for which the owners were required to submit proof of use for additional goods or services per class.
In 51 percent of the registrations selected, the trademark owners failed to supply the proof of use requested. The owners of 35 percent of the registrations selected asked that the USPTO delete certain goods/services, that the owners had initially claimed were in use. And a whopping 16 percent of selected registrations were Cancelled because the owners failed to respond at all.
If you are a trademark owner with registrations having multiple goods/services in a single class, are you prepared to prove use for all the goods/services listed if your trademark is selected for the random audit?
A PRO-ACTIVE APPROACH Go over your trademark portfolio, and assess which, if any, of your trademarks are vulnerable, if audited. You may chose to file a Post-Registration Amendment now, deleting the unused goods or services, to save yourself the time and expense if your trademark is chosen for audit.
E-mail or call me if you are interested in filing an amendment now for any of your trademarks listing goods and/or services not currently being provided by you or your company.