The US Trademark Office Doubles Down on Post Registration Proof of Use Audits

By Maria A. Savio

To promote the accuracy and integrity of the trademark register, the USPTO started a pilot program in November of 2017 which randomly examined 500 post registration declarations of use filed in conjunction with either sixth year declarations of use (Section 8 or 71 affidavits) or 10th year renewals. More recently, the Trademark Office decided to make the random audit process permanent. Here’s what you need to know in the face of the new practice.

As part of the normal procedure, one submits a specimen of use for one item in each class. If your registration is selected, the USPTO will issue an Office Action asking for “proof of use” on two additional items in each class of the registration.

Proof of use is more than just a “specimen of use,” as the evidence submitted needs to actively show use of the mark on the goods. A hangtag showing the mark is not sufficient; the hangtag must show that it is appended to a coat or pants for instance. Similarly, packaging must show or identify the goods. Service mark “specimens of use” are acceptable as proof of use.

The USPTO gives the below as examples for good proof of use for goods:

  • Photographs that show the mark on a tag or label affixed to the goods
  • Hang tags or labels with the mark and the generic name of the specific goods on the tag or label
  • Screen shots of webpages that show the mark being used in connection with the goods at their point of sale
  • Photographs of the mark on packaging where the goods are visible through the packaging
  • Photographs of the mark on packaging where the packaging identifies the specific goods included in the package.

Examples for good specimens for services:

  • Copies of brochures or flyers where the mark is used in advertising the services
  • Photographs of the mark on retail store or restaurant signs
  • Photographs of the mark on service vehicles
  • Screen shots of website printouts where the mark is used in the actual sale or advertising of the services.

A notice of acceptance is issued if your post registration response sufficiently establishes use on the additional goods/services that were selected in the audit.

If you cannot show use on the goods or services selected in the audit, and you delete those goods (which you must do), you will need to be sure to delete each and every other item in the registration on which you will not be able to adequately show use. Your obligations, however, do not end with the mere deletion. Since you have now deleted goods/services after filing your initial affidavit of use for those goods/services (meaning your affidavit was not candid), you have to prove use on each and every remaining item in the registration to keep it in force. You can do this when responding to the first Office Action and thus avoid a second Office Action, or you can wait for the second Office Action to issue. The second Office Action will literally ask you to prove use on every single item remaining in the registration. The benefit of waiting for the second Office Action to issue is just administrative, as you are given six months additional time to gather everything, but if you want to get the process over with faster, it is better to submit the proof of use when responding to the first Office Action. While I imagine third Office Actions will be rare, a third action might issue if proof of use has yet to be established as to any remaining goods and services.

Barring extraordinary circumstances which you have the obligation to establish, if you do not timely respond to office actions, your registration will be cancelled. The time frame is 6 months from the date of issuance.

Should the requirement to prove use on each and every item listed in the registration be “unduly burdensome,” you can file a petition with the Director of Trademarks explaining that you have “substantially complied” with the requirement to show proof of use and explain why further compliance would be unduly burdensome. Your statements must establish that the mark is in use on or in connection with the goods or services in the registration. Pending the determination on the petition, you will nevertheless need to respond to the Office Action by including the response with your petition.

As one can see, an audit, by definition, is not a friendly process. Best practices dictate that you delete all goods on services for which you cannot establish proof of use in your initial affidavit or declaration of use. This way, when you first receive the audit request to provide proof of use on two more items in each class, you can do that and thus terminate the audit. Anything short of that is just going to be a headache, especially if your registration has multiple classes and pages and pages of goods.

Keep in mind that good practice dictates that you or your counsel from the get-go should identify your goods/services as best you can using the Acceptable Identification of Goods and Services Manual to do so. If a broad term is permitted, it makes no sense to specify items that come within the broad term.  For example, “coffee” is an acceptable designation. Therefore, it makes no sense for your application to list “ground coffee, whole bean coffee.”  Maybe selling “coffee” is arguably different than selling beans and so you might want to specify that you sell “coffee beans;” but why specify if they are ground or whole, roasted or not, if you don’t need to specify it. Nor does it make sense for your application to identify specific flavored coffees. Again, always choose the broadest word possible so that you can ultimately prove use on what it is you are selling. Usually, the Trademark Office needs precise identifications only in connection with making determinations of what class or classes the goods or services should be registered. In this case, both “non-caffeinated coffee” and “coffee” are in the same class 30, so why specify that you sell the “non-caffeinated” type?  The point here is that if the initial application had problematic terminology or terminology that was too precise, that will come back and cause difficulties during these post registration audits. So best practices start from the very beginning of the process, when you file an application in your home country, if not first at the USPTO.