Alt Legal Connect Session Summary: What You Need to Know about the USPTO’s Post-Registration Audit Program
Alt Legal Team | October 29, 2020
Thank you to Bryttni Yi for participating as a Law Student Reporter at Alt Legal Connect! Bryttni is a 3L at Brooklyn Law School. Law Student Reporters had the opportunity to attend Alt Legal Connect in exchange for contributing to the social media presence of the conference. Reporters assisted by preparing blog posts and live-posting about sessions and in turn were permitted to attend all Connect sessions including valuable networking and social events to make meaningful connections with trademark professionals.
On Wednesday, October 28, Allison Ricketts, Partner at Fross Zelnick Lehrman & Zissu, presented the session, “What You Need to Know about the USPTO’s Post-Registration Audit Program.” She provided an overview of the USPTO’s post-registration audit program, its results thus far, and how to prepare your clients to pass the audit in the event their registration is selected for audit.
What is the Post-Registration Audit Program and Why Was it Adopted?
The USPTO post-registration audit program was introduced through a pilot program in 2012 that randomly selected registrations for auditing. Each registrant was required to provide specimens of use for two items in each class it was listed in. The USPTO introduced the post-registration audit program because many registrants do not delete goods for which the mark is not being used when the Section 8 Declaration is filed. The program became a permanent fixture in 2017. Under the permanent program, 10% of post-registration declarations of use filed under Section 8 or Section 71 will be randomly selected for audit. If selected, the USPTO will send an Office Action requiring “additional proof of use in the nature of information, exhibits, affidavits or declarations, and specimens showing use in commerce.” The Office Action will advise trademark owners to delete goods/services for which they are unable to provide proof of use.
Why Might the Declarations Incorrectly Claim Use in Commerce?
One of the most prevalent reasons for incorrect declarations are due to a lack of understanding of the requirement which is multiplied by the requirement of providing a single specimen per class. Another reason is due to a lack of understanding about what constitutes “use in commerce” and what is “current” use in commerce. Sometimes the registrant does have use, but does not have a specimen that satisfies the USPTO’s requirements. Allison also mentioned that sometimes the electronic forms are difficult to navigate or the attorney is reluctant to question clients about their claims of use.
How to Show Proof of Use in Commerce
Sufficient evidence showing proof that the mark is actually used in commerce with goods would include:
Photographs that show mark on a tag or label attached to the goods
Web page printouts or screenshots that show the mark used in connection with the goods at their point of sale
Photographs of the mark on packaging where the good are visible through the packaging
Sufficient evidence showing proof that the mark is actually used in commerce with services would include:
Copies of advertising where mark is used to directly associate with services
Photographs of the mark on stores or signage
Photographs of the mark on service vehicles
Screenshots of websites with the URL and date of printing
Registrants who voluntarily submit specimens for all goods/services listed in their initial filing can still receive an audit. Audits require “proof of use” which is substantially different from specimen of use.
Allison listed a few best practices to best prepare yourself in the event that your client receives a post-registration audit.
Inform registrants/clients of the new audit program and potential extra fees of responding to the action
Remind registrants/clients that the signer of the registration is subject to criminal penalties for willfully making false statements
Preserve and gather specimens showing evidence of use (ex. website screenshots, etc.)
Be strategic with identifications and suggest deletions of overlapping identifications (ex. “shirts, t-shirts, and tops” could all be classified as “tops”)
Do NOT sign for your client and make sure they do not have someone else sign for them either
Allison and Nehal Madhani, CEO and Founder of Alt Legal, finished out the session with a fun role-playing skit about an attorney filing a trademark application for her client. The client stated that he operated in interior design, but as a specimen he provided a website showing trademark docketing software and he refused to provide any proof of use. This hilarious skit highlighted a situation that many practicing attorneys have faced before. It served as a lesson to remain vigilant when talking to “that” client!
Access the Recording and Materials: Click here
Trademark fees for registration adjustments: https://www.federalregister.gov/documents/2020/06/19/2020-13262/trademark-fee-adjustment (Thanks, Tamara Pester!)
USPTO allows for amendments to registrations due to changes in technology: https://www.uspto.gov/trademarks-maintaining-trademark-registration/amending-your-registration-s-goodsservices-when (Thanks, Anne LaLonde!)