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Deadwood on the U.S. Trademark Register: Random Audit Pilot Program Proposed to be Made Permanent



The U.S. Patent and Trademark Office (USPTO) has long been concerned about so called "deadwood" on its register -- registrations granted where the registration is not being used or not used on all goods/services identified in the registration, but the registration's existence keeps others from obtaining registration protection for similar goods/services. This is particularly an issue where the periods between required showings of continued use is long.  For example, the period between renewals is ten years*.

To maintain a U.S. trademark/service mark registration, a declaration of continued use** must be filed at certain periodic intervals affirming U.S. commerce use*** of the registered mark in connection with all of the goods/services listed in the registration. However, current regulations require only the submission of one specimen of use per class**** in the registration when filing the declaration of continued use. It has long been suspected that not all declarations of continued use are accurate with regard to all goods/services in a registration. This is particularly so for registrations based on foreign treaty rights (Madrid Protocol, Paris Convention) where the applications can--and often do--identify literally pages of goods/services but where U.S. commerce use of the mark is not a prerequisite to U.S. registration.

Rather than request proof of use of a registered mark in connection with each good or service, the USPTO implemented a pilot random audit program announced in 2012 with the goal to access and promote the accuracy and integrity of the U.S. Trademark Register. (77 Fed. Reg. 30197). The USPTO randomly selected 500 registrations to request further evidence of use for select goods and/or services for registrations having more than one good/service for which declarations of continued use were submitted. Where the registrant couldn't submit adequate evidence of continued use of the registered mark in connection with the audited good(s)/service(s), those goods/services were cancelled.  If the registrant failed to respond at all, the registration was cancelled in its entirety.

The random audit pilot program was deemed successful in flushing out deadwood registrations where not all of the goods/services were in use in commerce. Fifty-one percent of the 500 audited registrations in the pilot program were cancelled or had goods/services cancelled from the registrations.

On June 22, 2016, the USPTO proposed rules to make this random audit pilot program permanent. (81. Fed. Reg. 40589). If the final rules are the same as the proposed rules, the USPTO will select up to 10% of filed declarations of continued use for heightened scrutiny. The owner of an audited registration will be sent an Office Action (through registrant's counsel, if counsel is appointed) and given a six month deadline to provide additional proof of use of the mark for goods/services not supported by the specimen(s) filed with the declaration of continued use. If the registrant cannot support continued use for the select goods/services and use cannot be established, the registration will be cancelled with respect to those goods/services. If the registrant fails to reply, the audited registration will be cancelled in its entirety unless the registration is still within the grace period, such that the registrant has the option to file a completely new continued use declaration (under Section 8 or Section 71 of the Trademark Act), along with a new fee and grace-period surcharge.

Final rules are expected this fall. We'll continue to monitor any requirement changes. To review the public comments made regarding the proposed rule changes, please click here.

* U.S. registrations require a signed declaration of continued use that includes a specimen showing commerce use of the registered mark in connection with at least one good /service per class under Section 8 of the Trademark Act or a declaration of use (with the same specimen requirement) under Section 71 of the Trademark Act by the 6th year anniversary of the registration issuance, otherwise the registration is cancelled.  All registrations require another declaration of continued use with renewals that are required by the 10th year anniversary of the registration and every ten years thereafter.

** For U.S. registrations granted solely on Madrid Protocol, the requirement under Section 71 of the Trademark Act is a declaration of use (not continued use) at the 6th year registration anniversary.

*** U.S. interstate or international commerce use.

**** There are 45 International Classes with goods in classes 1-34 and services in classes 35-45.

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