Use It or Lose It: USPTO to Conduct Post-Registration Trademark Use Audits
The Action: The United States Patent and Trademark Office ("USPTO") may now issue post-registration Office actions requiring evidence of use on multiple goods or services for Section 8 and 71 trademark renewal affidavits.
The Effects: The USPTO may cancel registrations in whole or in part where a registrant fails to provide requested evidence of use on additional goods and services listed in a registration.
Looking Ahead: Owners of registrations should ensure that they can support renewal filings with evidence of use on all goods and services in the registration.
Trademark owners take note: Affidavits to renew your U.S. trademark registrations may be getting a closer look. On March 21, 2017, the United States Patent and Trademark Office ("USPTO") implemented a new rule aimed at clearing the trademark register of marks no longer in use. Specifically, the USPTO may cancel or limit a registration if the registrant does not provide evidence of use on additional goods or services listed in the registration when requested.
The rule is part of a broader effort by the USPTO to clear the trademark register of so-called "dead wood," i.e., marks that are not actually in use in commerce for some or all of the goods or services listed in a registration. It is a departure from longstanding USPTO practice, which previously required trademark owners to submit proof of use for one good or service when renewing registrations, regardless of how many different goods or services in each International Class were covered by the registration.
Now, registrants may be required to submit additional information, including exhibits, affidavits, declarations, or additional specimens, "as may be reasonably necessary for the USPTO to ensure that the register accurately reflects marks that are in use in commerce in the United States for all the goods/services identified in the registrations," unless excusable nonuse is claimed. The USPTO will conduct random audits of approximately 10 percent of Section 8 and Section 71 renewal affidavits, a percentage that may increase over time. The rule is intended to help the USPTO maintain a more accurate and reliable register and reduce the costs and burdens associated with challenging marks that may no longer be in use, although opponents of the rule have claimed that it will disproportionately affect owners of foreign registrations.
According to the USPTO, the change reflects ongoing concerns that the register does not accurately depict marks in use in commerce in the United States for the goods/services identified in registrations, which comes at a cost to the public. "The public relies on the register to determine whether a chosen mark is available for use or registration," the agency explained in the Federal Register. "Where a party's search of the register discloses a potentially confusingly similar mark, that party may incur a variety of resulting costs and burdens, such as those associated with investigating the actual use of the disclosed mark to assess any conflict, proceedings to cancel the registration or oppose the application of the disclosed mark, civil litigation to resolve a dispute over the mark, or changing plans to avoid use of the party's chosen mark."
Background on Use Requirements
Trademark rights in the United States are based on use in commerce. Typically, before a mark can be registered with the USPTO, an applicant must demonstrate that a mark is being "used in interstate commerce" in connection with the goods and/or services identified in the application. However, applications may be filed in the United States based on foreign trademark registrations without providing evidence of use in commerce. Such applications must recite a bona fide intent to use the mark in U.S. commerce, but unlike a U.S. application, there is no requirement that the trademark office accept a specimen of actual use before a registration issues.
While owners of U.S. registrations are required to file either a Section 8 Affidavit of Use (for use-based applications) or a Section 71 Affidavit of Use (for extensions of protection of international registrations) attesting that they are using the mark in connection with all of the goods and/or services identified in the registration, proof of use is required for only one good or service in each class. Thus, if a mark is registered in connection with hats and t-shirts in Class 25, the registrant need only provide evidence of use in commerce in connection with hats in order to renew the registration.
As a result of these practices, a number of federal registrations appear to remain valid even though the registrant no longer uses the mark in connection with some or all of the goods and/or services identified in the registration. These registrations, in turn, block applicants from registering and using similar marks in connection with the same or similar goods or services, unless the applicant is willing to assume the risk and expense of a cancellation proceeding that alleges abandonment, non-use, or fraud.
Application of the New Rule
The new rule creates a permanent audit program that allows for random audits of Section 8 and Section 71 affidavits filed for registrations covering more than one good or service per class.
If a registration is audited, the USPTO will issue an Office action specifying the goods/services for which additional proof of use is required and advising the registrant to delete the goods/services if it cannot show use in commerce. The USPTO anticipates requesting proof of use for two additional goods/services per class in such Office actions, but proof of use in commerce could be required for additional goods/services.
If a registrant cannot show proof of use in response to the Office action, or responds but is ultimately unable to provide the requested information, the USPTO would deem the Section 8 or Section 71 renewal affidavit unacceptable as to the goods/services to which the requirement pertained and will cancel the registration as it applies to those goods/services.
It should be noted that if a registrant does not respond to the Office action within the six-month response period, or before the end of the statutory filing period for the Section 8 or 71 affidavit, the USPTO will cancel the entire registration, unless there is still time remaining in the grace periods under Section 8(a)(3) or Section 71(a)(3).
The USPTO's Commitment to Clearing the Register of "Dead Wood"
The new rule is part of the USPTO's stated commitment to combating the issue of "dead wood" on the register, following an internal Pilot Program suggesting that a majority of registrations cannot verify use in connection with all of the covered goods/services.
From 2012 to 2015, the USPTO conducted a Post-Registration Proof-of-Use Pilot Program designed to identify whether trademarks enjoying the benefits of federal protection actually satisfied the Lanham Act's use in commerce requirements. The USPTO selected a statistically significant sample of registrations filed under Lanham Act Sections 1(a), 44(e), and 66(a), as well as 1(a) and 44(e) combined bases and then required the registrants to submit proof of use of their marks in connection with at least two additional goods and/or services per class, in addition to their required maintenance filings. Of the 500 registrations selected, 51 percent failed to verify use in connection with the particular goods/services claimed in the registration.
Evidence assembled from the Pilot Program confirmed that a significant number of registrations fail to meet the use in commerce requirements of the Lanham Act. In response to these findings, the USPTO considered a variety of proposals that would make it easier for third parties to attack existing registrations based on alleged non-use. These proposals include streamlining existing cancellation procedures filed on the basis of non-use and/or abandonment by implementing regulatory changes at the Trademark Trial and Appeal Board and creating statutory expungement and cancellation procedures that would allow third parties to clear marks from the Federal Register where use sufficient to support registration has not commenced. The USPTO requested comments on these proposed procedures in June 2016, and they are still being considered.
Best Practices for Trademark Owners
Now more than ever, owners of registrations must ensure that they can support renewal filings with evidence of use. Trademark owners should keep records demonstrating use of each good/service covered by a renewed registration for all goods and services intended to be renewed.
Registrants should be prepared to provide evidence of use for all goods and services when filing renewals and take a conservative approach to renewal filings, particularly since it is unclear what role a successful USPTO audit could play in fraud allegations (i.e., whether an affidavit of continued use that a registrant fails to support when audited could be used to support a third-party fraud claim in cancellation or district court proceedings). Registrations covering numerous goods/services, particularly those goods and services that may be deemed unrelated, could be targeted.
Likewise, trademark registrants may wish to remove duplicitous or synonymous terms from new applications and delete such terms when renewing a mark, since a registrant may now be required to demonstrate use in commerce for all goods at the time of the Section 8 or Section 71 renewal.
Mark owners should also keep a close eye on renewals for any problematic marks owned by third parties, as a USPTO audit could provide insights into the scope of use of a mark or expose weaknesses, such as abandonment, non-use, or fraud, that could support a potential cancellation proceeding.
Finally, trademark owners should continue to monitor the USPTO's renewed efforts to clear the register of "dead wood," including the proposed expungement and cancellation procedures, as these efforts continue to evolve.
Four Key Takeaways
1. As part of an initiative by the USPTO to clear out "dead wood," trademark registrations could be cancelled or limited if the registrant does not provide requested evidence of the trademark's use on additional goods or services listed.
2. Registrants may be asked to provide supporting information, including exhibits, affidavits, or declarations.
3. The USPTO expects to conduct random audits of approximately 10 percent of Section 8 and Section 71 renewal affidavits.
4. Registration owners should be prepared to provide evidence of use for all associated goods and services when filing trademark renewals and consider a conservative approach to renewal filings.
If you have questions about how the USPTO's new audit program affects your portfolio or trademark strategy, please contact your principal Firm representative or one of the lawyers listed below. General email messages may be sent using our “Contact Us” form, which can be found at www.jonesday.com/contactus/.
Meredith M. Wilkes
Anna E. Raimer
John G. Froemming
Elizabeth McKenzie of the Washington Office and Rachel Geist of the Atlanta Office assisted in the preparation of this Commentary.
Jones Day publications should not be construed as legal advice on any specific facts or circumstances. The contents are intended for general information purposes only and may not be quoted or referred to in any other publication or proceeding without the prior written consent of the Firm, to be given or withheld at our discretion. To request reprint permission for any of our publications, please use our “Contact Us” form, which can be found on our website at www.jonesday.com. The mailing of this publication is not intended to create, and receipt of it does not constitute, an attorney-client relationship. The views set forth herein are the personal views of the authors and do not necessarily reflect those of the Firm.
 Id. at 6260
 Id. at 6262.
 See id.
 Id. at 6260.
 15 U.S.C. § 1127.
 See generally Trademark Manual of Examining Procedure ("TMEP") §§ 1009, 1902.
 Owners of registrations obtained through the Madrid Protocol must later file a Section 71 affidavit attesting to use on at least one of the goods and services covered by the registration to renew the mark. 15 U.S.C. § 1141k.
 Section 8 and 71 affidavits must be filed: (i) between the fifth and sixth year following registration, and (ii) within the year before the end of every 10-year period after the date of registration. 15 U.S.C. §§ 1058, 1141k.
 Although a registrant previously had to provide only a specimen of use in commerce for one good or service per class covered in a registration upon renewal, a sworn statement was also required to confirm continuing use of the mark in commerce on all of the goods and services for which the registration was renewed. See TMEP §§ 1604.09, 1613.09.
 See Federal Register, Vol. 82, No. 12 at 6262.
 See 15 U.S.C. §§ 1058(a)(3), 1141k(a)(3); 37 C.F.R. 2.163, 7.39. If the time for renewal remains in the grace period, the registrant may file a new Section 8 or Section 71 affidavit, with a new fee and grace- period surcharge.
 See Federal Register, Vol. 82, No. 12 at 6260 (discussing USPTO Post-Registration Proof-of-Use Pilot Program).