Post-Registration Proof of Use Audit Program

Starting as a pilot program in 2012, the auditing program used by the USPTO is essential in maintaining the reliability of the user-based trademark register as an accurate reflection of marks in use in commerce. Registrations in the database are entitled to be maintained only for goods and services for which the mark is used in commerce or registrations for which temporary nonuse is excused due to extenuating circumstances. Since the registration is user-based, it is up to the user to maintain the registration, which can invariably lead to error. The occurrence of improper or inaccurate registration maintenance filings can jeopardize the validity of an owner’s registration, may unnecessarily block future applications and diminish the trademark registration’s ability to provide accurate information the public.

If an owner of a mark is audited, the USPTO will require the owner to show proof of the mark in connection with additional goods and services listed in the registration. If the owner cannot provide such proof for the specified goods and services, they will be removed from the registration. Which, as mentioned above, can help to negate the chances of unnecessarily blocking future applications.

Any owner of a trademark can be subjected to an audit if their registration meets the following requirements: The owner filed a §8 or §71 declaration of use in the appropriate timeline, and the registration includes at least one class with four or more goods or services. A registration including at least two classes with or more goods or services may be audited as well.

If a registration owner is audited, they will receive an office action from a post-registration examiner. The action will inform the owner that they’ve been selected for auditing and it will also identify two goods or services for each audited class. The owner must then submit proof for each of the identified goods or services.

If the USPTO accepts the submitted evidence, a notice of acceptance will be issued. If there are issues, or failure to provide sufficient proof, a second action will be sent. If an owner cannot provide sufficient proof, they must remove all goods and services from their registration for which they cannot provide proof of use, note, this does not simply mean the ones identified for audit, but for all goods and services that cannot be proven to be connected the mark in use.  The deadline for responding to a first or second office action is whichever of the following comes later: Six months after the issue date of the office, or the end of the statutory filing period, not including the grace period.

If an owner fails to respond to either a first or second office action by the deadline above, the registration may be canceled in its entirety. If extraordinary circumstances prevent an owner from responding on time, the owner may file a Petition to Director, asking for a waiver of timely response. For a fee, this petition may also be filed if an owner is dissatisfied with the post-examiner’s final decision. Following the submission of this petition, the Director will then review the record and determine whether or not the examiner made an error.

For more information regarding the post-registration proof of use auditing program visit

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