November 4th, 2024

Will the Updates on USPTO Trademark Audits Hurt You?

Hello Reader,

We wanted to inform you about a recent update from the United States Patent and Trademark Office (USPTO) that could impact your trademark registrations during the post-registration maintenance process.

As you may know, the USPTO previously conducted "random" audits of section 8 and section 71 filings. However, recent communications confirm what we’ve suspected for some time—these audits are no longer random. Instead, the USPTO is moving toward directed audits when certain characteristics raise concerns, such as:

Specimens that appear digitally altered.
Evidence suggesting that the mark is not being used in the ordinary course of trade.

This shift means that registrations with questionable use claims are now being specifically targeted for audit. It’s important to address these audits seriously, as failing to comply can lead to financial penalties and even the cancellation of your trademark registration, which could jeopardize your rights to the mark.

The USPTO’s goal is to protect the integrity of the trademark register and ensure that only marks being actively used in commerce are maintained. These changes are part of their ongoing effort to improve the overall accuracy of the register.

As your legal team, our priority is to ensure your trademarks remain protected and compliant with the USPTO’s evolving standards. If your registration is selected for audit, we’ll work with you to provide the necessary evidence and respond in a timely manner to avoid any negative consequences.

Please don’t hesitate to reach out if you have questions or need assistance with your filings. We’re here to support you every step of the way.

Thank you for your continued trust in us.

Keep Your Brand Safe and Protected,
J.J. Lee and the Trademark Lawyer Law Firm Team!

PS. Contact us to mark sure your business is protected!

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What are Trademark Application Suspensions?

Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.

What are Disclaimers for Trademarks?

A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights. A good example of this is disclaiming “café” if your services are for a café.

What is the Supplemental Registry?

If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry. In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.

What is the Date of First Use?

Two dates must be specified in a trademark application: Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade. Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.

What is the Renewal Timeframe for a Trademark?

The renewal timeframe for a trademark is between the 9^th and 10^th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.