USPTO Announces Addition of Targeted Audits
The United States Patent and Trademark Office (USPTO) plans to conduct directed audits of Section 8 and 71 affidavits or declarations when the filings raise concerns that the subject mark is not in use in commerce in the ordinary course of trade.
Under the directed audit program, the initial post-registration office action may request proof of use for all or some of the goods or services covered by the registration. The procedures will otherwise mirror those already in place for random audits.
The USPTO hopes these directed audits will allow the agency to improve the accuracy and integrity of the trademark register, which currently contains over 3.3 million marks. In particular, the Office is concerned with the use of digitally altered specimens, and specimens generated by specimen farms to falsely claim use of the marks in question.
Since 2017, the Office has conducted almost 30,000 random audits, with almost half resulting in the deletion of goods, services, or entire classes. Over 10% of audited registrations were canceled in their entirety. The rates of deletions and cancellations should only increase with the addition of targeted audits. The precise scope of the fraudulent specimen problem is not known, but the USPTO speculates that there are potentially tens of thousands of registrations supported by invalid specimens of use from specimen farms, many of which are being offered for sale on auction sites catering to people needing a trademark registration to participate in online platform seller programs.
In addition to removing more invalid marks from the register, the introduction of directed audits may also reduce the frequency with which entirely valid marks are subjected to potentially costly or time-consuming audit requirements. The removal of invalid marks benefits applicants who could otherwise have their mark refused based on a likelihood of confusion with an invalid registered mark.
If your trademark registration is selected for audit, Renner Otto is happy to help you navigate the audit process and to maintain your registration where appropriate.