August 22nd, 2024

Avoid Trademark Audits!

Hello Reader,

Avoid Trademark Audits

The government is auditing trademarks. When it comes time to renew your trademark registration, the USPTO has been selecting specific trademarks to audit.
I'm going to show you what the USPTO looks for when selecting a trademark to audit.

1. The trademark registration renewal is file timely
AND then a combination of either one or the other:

Trademark includes at least one class with four or more goods or services. For example, your registration covers purses, wallets, backpacks, luggage tag, and suitcases all in class 018.
Your trademark registration includes at least two classes with two or more goods or services in those classes.

For example, your registration covers purses and suitcases in class 018. And in class of zero to five clothing, namely shirts, shorts, pants, and coats and hats.

Once audited, you must respond to the audit, or your trademark registration will be canceled. If you end up removing some goods and or services, and you cannot show current proof of use in commerce, the USPTO will charge $250 per class, and failure to pay means that your trademark registration will be canceled.

To avoid the likelihood of an audit, limit your trademark registration to just one class with less than four goods and or services. listed, or if that can't be avoided, make sure that you can provide curb proof of use in commerce for all your goods and services that you list on your trademark registration.

If your Trademark Registration received an audit from the USPTO, contact us immediately!
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Another Reason to Have Your Trademark Registered

"Judge Hunt dismissed without prejudice the false association claims brought by the seven other named plaintiffs in the proposed class action who have not registered their marks."

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

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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.