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Is Your Trademark Registration at Risk?

In the U.S., trademark registrations can last forever. That’s the good news.

There’s not really any bad news. But thanks to a new United States Patent and Trademark Office (USPTO) program, trademark owners will have to pay closer attention to how those registrations are maintained.

That’s right, I’m talking about the Post Registration Proof of Use Audit Program. Try to contain your excitement!

So why should trademark owners care about this new program, which I’m calling the PRPOUAP (it rolls off the tongue)?

Need a refresher on trademarks? Click here to get up to speed

How to Maintain a Trademark Registration

Let’s start here. Trademark registrants have to file what’s called a Section 8 Declaration of Use periodically after the registration is issued.

This Declaration has to be filed within the 5th & 6th years after the date of registration, within the 9th & 10th years after the date of registration, and every 10 years thereafter.

So if your trademark registration was issued on January 1, 2018, that means that you need to file a Declaration of Use between 1/1/2023 and 12/31/2023, between 1/1/2027 and 12/31/2027, and every 10 years after that.

(There are a few other types of trademark registration maintenance filings, but they’re not related to the subject of this post. Consult your favorite trademark attorney for all the details.)

What is a “Declaration of Use?” It’s what it sounds like: a statement that you are still using the trademark in interstate commerce in connection with the goods and services in your filing. If you’re not still using the trademark, you can’t legally file the Declaration of Use, which means that the registration will be cancelled. Use it or lose it, get it?

If you’re not using the mark in connection with all of the goods and services in your registration, you can delete some of the goods/services in the Declaration of Use. So if I registered ABCXYZ as a trademark for pet food and welding services, but I’m out of the welding business, in the Declaration of Use I could delete the welding wording and leave the pet food. From that point on, the registration would continue to be valid for pet food.

So What’s With the Audits?

Lots of trademarks include multiple goods or services in the same class. For example, you might have a trademark registered in class 025 for “t-shirts, sweatshirts, shorts, pants, socks, shoes, and hats.”

It used to be that if you submitted the Declaration of Use and you included a specimen (typically an image) showing use of the mark on only one type of good per class (for example, just for shoes) that would suffice. The result was a lot of “dead weight” trademark registrations – meaning, trademark owners could maintain a registration for decades even if they were no longer using the mark on all of the listed goods/services.

The new program (the PRPOUAP) is actually pretty straightforward. Going forward, 10% of Declarations of Use that meet certain criteria will be audited. This simply means that the USPTO will reach out to the trademark owner (or their attorney) and ask for proof of use on all of the goods/services.

Note that this will only apply in two cases:

  • The registration includes at least one class with four or more goods or services, or
  • The registration includes at least two classes with two or more goods or services in at least two classes.

Declarations of Use for registrants that don’t fall into one of those two cases won’t be audited, at least not for now.

How Do I Make Sure I Pass the Audit?

Simple: follow the use it or lose it rule. Don’t file a Declaration of Use claiming use in connection with all the goods and services in your registration if you’re no longer actually using the mark in that way. If you’ve dropped some types of goods from your product line, delete them in the Declaration of Use. That way, when the audit notice comes along, you won’t have to worry about being out of compliance.

Better yet: make sure that your trademark attorney is up to speed on this program and ask him or her if there’s anything to be worried about when your trademark registration is up for renewal.

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