The United States Patent and Trademark Office (USPTO) started the Post Registration Proof of Use Audit Program in November 2017. The program promotes the accuracy and integrity of the trademark register. See 37 C.F.R §§2.161(h), 7.37(h).
Could my registration be audited?
What happens if my registration is audited?
What is "proof of use"?
How is proof of use different from a specimen?
What happens after I respond to the first office action?
What if I cannot provide proof of use for the audited goods or services?
How can I prevent a second office action?
Can I file a new declaration instead of submitting a response?
Will I receive a second office action and what are the requirements?
What is the deadline for responding to a first or second office action?
What is the statutory filing period for filing a declaration of use?
What if I do not respond to a first or second office action?
What if providing proof of use for all remaining goods or services would be unduly burdensome?
What if I disagree with the examining attorney’s determination?
What happens if a third action is issued?
How do I submit my response to an office action?
How do I submit a petition to the Director?
Trademark owners submit one specimen per class with six and ten-year declarations of use filed pursuant to Trademark Act Section 8 or 71. During a pilot program, we randomly selected 500 trademark registrations for which owners filed six-year declarations of use. We audited these registrations by requiring the owners to submit proof of use for at least two additional goods or services per class.
The program improved the integrity of the trademark register by allowing us to cancel audited registrations with unsubstantiated use claims or remove unsupported goods and services from others.
Trademarks that are not in use on all registered goods and services may unnecessarily block future applications. They also allow trademark owners to maintain rights they are not entitled to maintain. Because removing these registrations or deleting goods or services not in use is crucial for maintaining an accurate register, we made the program permanent.
Your registration may be audited if you meet both requirements:
- You filed a Section 8 or 71 declaration of use
- Your registration includes at least one class with four or more goods or services.
For example, your registration covers purses, wallets, back packs, luggage tags and suitcases (all Class 18).
Your registration includes at least two classes with two or more goods or services
For example, your registration covers:
- Purses and suitcases (Class 18)
- Clothing, namely shirts, shorts, pants, coats and hats (Class 25)
- Retail clothing stores (Class 35).
You will receive an office action from a trademark examining attorney saying that your registration has been selected for audit. It will identify two additional goods or services for each audited class. You must submit proof of use for each identified good or service.
The office action will also identify any issues with the declaration. You must address all issues raised in the office action in your response.
Proof of use is evidence that clearly shows how you are using your mark in commerce on the identified goods or in connection with the services in your registration.
Examples for goods:
- Photographs that show the mark on a tag or label affixed to the goods
- Hang tags or labels with the mark and the generic name of the specific goods on the tag or label
- Screen shots of webpages that show the mark being used in connection with the goods at their point of sale
- Photographs of the mark on packaging where the goods are visible through the packaging
- Photographs of the mark on packaging where the packaging identifies the specific goods included in the package.
Examples for services:
- Copies of brochures or flyers where the mark is used in advertising the services
- Photographs of the mark on retail store or restaurant signs
- Photographs of the mark on service vehicles
- Screen shots of website printouts where the mark is used in the actual sale or advertising of the services.
For goods, the criteria for proof of use is stricter than the criteria for a specimen. Proof of use requires additional evidence that demonstrates that you actively use your mark in commerce with the goods identified.
For example, the following types of specimens would not meet the criteria for proof of use:
- A hangtag by itself that does not identify the goods
- A label by itself that does not identify the goods
- Packaging by itself that does not identify or show the goods.
For services, proof of use is the same as a specimen.
If your response meets all requirements, including proof of use, we will issue a notice of acceptance.
If your response does not include acceptable proof of use for, or merely deletes the audited goods or services, we will issue a second office action requiring proof of use for all of the remaining goods or services in your registration for which you have not provided proof of use.
If you cannot provide proof of use for the audited goods or services, your response should delete all goods or services for which you cannot provide proof of use, not just the ones selected for audit. If your response deletes the ones audited and goods or services remain in the registration that you have not provided acceptable proof of use for, we will issue a second office action.
If in response to the first office action, you submit proof of use for the audited goods or services and there are no other issues with your declaration, we will not issue a second action. However, if you need to delete the audited goods or services, then you can provide proof of use for all the remaining goods or services in your registration to avoid a possible second office action.
If time remains in your statutory filing period, you may file a new declaration and pay new filing fees. However, keep in mind that we selected your registration—not your declaration—for audit, so you will receive another office action.
If you file a new declaration, you should delete all goods and services for which you cannot provide proof of use. This ensures that when we issue the first office action for your new declaration, you will be able to comply.
We will issue a second office action if your response does not include acceptable proof of use for the audited goods or services or merely deletes them. You must provide proof of use for any goods or services that you wish to keep in your registration.
The second office action will require proof of use for all remaining goods or services in your registration that lack acceptable proof of use.
To respond to the second office action, you should provide proof of use for all remaining goods or services or delete them.
If after reviewing your response, there are goods or services remaining in the registration for which you have not provided acceptable proof of use, we will issue a third and final action. It will advise you that the goods or services for which you have not provided acceptable use will be deleted from your registration.
Your deadline is whichever is later:
- Six months after the issue date of your office action
- The end of the statutory filing period (not including grace period)
For six-year declarations of use, you can file as early as five years after your registration date, or as late as six years after you registration date. So, the statutory filing period is between five and six years after registration. It can be extended by six months if you pay the fee to file during the six-month grace period.
For ten-year declarations of use, you can file as early as nine years after your registration date, or as late as ten years after you registration date, and between every ninth and tenth year period that follows. So the statutory filing period is between nine and ten years after registration, and during the one year preceding every ten-year period that follows. It can be extended by six months if you pay the fee to file during the six-month grace period.
If you don’t respond to a first or second office action by the deadline, your registration will be canceled in its entirety.
If extraordinary circumstances prevented you from responding on time, you can file a Petition to the Director under Trademark Rule 2.146 requesting the director waive the rule requiring a timely response. Examples of extraordinary circumstances may include:
- You did not receive the office action
- You were affected by a hurricane or flood that prevented submitting a response on time.
See TMEP 1708 for more information.
In the unusual situation where providing proof of use for all remaining goods or services would be unduly burdensome, you can file a Petition to the Director under Trademark Rule 2.146 after a second office action is issued. In the petition, request that the director exercise supervisory authority to find that you have substantially complied with the requirement to show proof of use for all goods or services in the registration. Your petition must include a statement of facts that specifies the goods or services you are not submitting proof of use for and explains why complying with the requirements of the audit would be unduly burdensome. The petition will only be granted if your statements or evidence provided establish that your mark is in use in commerce on or in connection with all goods or services in the registration.
The petition also must include a response to the office action or a specific request to suspend the period for replying to the office action. See 37 C.F.R. 2.146(g).
You can file a Petition to the Director under Trademark Rule 2.146 if you disagree with the refusal of your proof of use after the second or third office action has issued. We will review the record and determine if the examining attorney made an error.
We will issue a third action if there are goods or services remaining in your registration without acceptable proof of use.
To respond to a third action, you may:
- Petition the director under Trademark Rule 2.146 no later than six months from the issue date of the office action to request review of the examining attorney’s decision
- Request that we delete the goods or services without acceptable proof of use to expedite issuance of the notice of acceptance.
If you do not respond to the third action, the examining attorney will issue a notice of acceptance for the goods or services for which you have provided acceptable proof of use. The examining attorney will delete the remaining goods or services from your registration when the deadline expires. If you have not provided acceptable proof of use for any goods or services in the registration, your registration will be canceled in full.
Open the Response to Office Action for Post-Registration Matters form in the Trademark Electronic Application System (TEAS) to submit your response.
To submit proof of use, include the following declaration language, which may be copied into the response form:
The owner or holder was using the mark in commerce on or in connection with the goods and/or services identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted proof of use, during the relevant period for filing the affidavit of use.
The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of this submission, declares that the facts set forth above are true; all statements made of his/her own knowledge are true; and that all statements made on information and belief are believed to be true.
Open the Petition to the Director under Trademark Rule 2.146 form in TEAS to submit your petition.
Provide a statement of the facts, the relief you are requesting, any relevant evidence, and a signed declaration to verify the information in your petition. See 37 C.F.R. §2.20.
There is a $100 petition fee.