Post Registration Proof of Use Audit Program

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).

Why is the USPTO auditing registrations?
Could my registration be audited?
What happens if my registration is audited?
What is "proof of use"?
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 from issuing?
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 I disagree with the post-registration examiner’s determination?
Can I receive a third office action?
What if I don't respond to the third office action?
How do I respond to the third office action?
How do I respond to an office action?
How do I petition the Director?

 

Why is the USPTO auditing registrations?

The USPTO randomly audits registration maintenance filings to help preserve the trademark register as a reliable reflection of marks in use in commerce. The trademark register in the United States is a use-based register. Registrations are entitled to be maintained only for goods or services for which the mark is in use in commerce or for which temporary nonuse is excused due to special circumstances. Inaccurate or improper use claims in registration maintenance filings jeopardize the validity of your registration, may unnecessarily block future applications, and diminish the utility of the trademark register to provide notice of trademark rights to businesses and the public. Trademark owners submit one specimen per class with six and ten-year declarations of use filed pursuant to Trademark Act Section 8 or 71 to maintain their registration. If the USPTO audits your registration maintenance filing, you will be required to prove use of your mark for additional goods and services in the registration. If you do not substantiate use for those goods or services, they will be removed from the registration. Since it began as a pilot program in 2012, the audit program has allowed us to cancel or remove goods or services from registrations in more than fifty percent of audited registrations, resulting in a more accurate trademark register.

Could my registration be audited?

Yes, if your registration meets these requirements:

  1. You timely filed a Section 8 or 71 declaration of use; and
     
  2. (a) 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).

    OR

    (b) 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).

What happens if my registration is audited?

You will receive an office action from a post-registration examiner 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.

What is “proof of use”?

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 actual goods on the tag or label and informational matter that typically appears on a tag or label in use in commerce for these types of goods 
  • Screen shots of web pages with the URL and access or print date 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 generic name of the 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 signage
  • Photographs of the mark on service vehicles
  • Screen shots of web pages with the URL and access or print date where the mark is used in the actual sale or advertising of the services.   

What happens after I respond to the first office action?

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 in a particular class, 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 your response only provides proof of use for some of the audited goods or services and you have requested deletion of the other goods or services that have been audited in a particular class, 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.

What if I cannot provide proof of use for the audited goods or services?

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 goods or services being audited and other goods or services remain in the registration for which you have not provided acceptable proof of use, we will issue a second office action requiring proof of use for all of the remaining goods or services in each class for which you have not provided proof of use.

How can I prevent a second office action from issuing?

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. 

Can I file a new declaration instead of submitting a response?

Yes, if time remains in your statutory filing period. However, you will be required to pay new filing fees. Keep in mind that we selected your registration—not your declaration—for audit, so you will probably receive another office action in response to your second declaration.

If you file another 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 satisfy the proof of use requirements.

Will I receive a second office action and what are the requirements?

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 each class that you have not provided acceptable proof of use or deleted audited goods.  

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.

What is the deadline for responding to a first or second office action?

Your deadline is whichever is later:

  • Six months after the issue date of your office action OR
  • The end of the statutory filing period (not including grace period)
     

What is the statutory filing period for filing a declaration of use?

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 your 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 your 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.

What if I do not respond to a first or second office action?

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 requesting the director waive the rule requiring a timely response. Examples of extraordinary circumstances may include:

  • You were affected by a hurricane or flood that prevented submitting a response on time.

See TMEP §1708 for more information.

What if I disagree with the post-registration examiner’s determination?

You can file a Petition to the Director if you disagree with the refusal of your proof of use after the third office action has issued. There is a fee for a petition. The Director will review the record and determine whether the post-registration examiner made an error.

Could I receive a third action?

Yes, if there are goods or services remaining in your registration without acceptable proof of use.

What if I don't respond to the third office action?

If you have goods or services with acceptable proof of use, the post-registration examiner will issue a notice of acceptance for those goods or services and delete the remaining goods or services from your registration when the response 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.

How do I respond to a third office action?

You can either file a:

  • Petition to the Director no later than six months from the issue date of the office action to request review of the post-registration examiner's decision OR
  • Request to delete the goods or services with no acceptable proof of use.

How do I respond to an office action?

Use the TEAS Response to Office Action for Post-Registration Matters form in the Trademark Electronic Application System (TEAS) to submit your response.

To provide proof of use, attach an image file of your evidence of use (specimen), and 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.

The declaration must be signed by an authorized person. See TMEP 1604.08 (a) for section 8 or TMEP 1613.08 (a) for section 71. Include the typed or printed name of the signer and the date. There is no fee for filing a response.

How do I petition the Director?

Use the TEAS Petition to the Director form to submit your petition. 

Your petition must include 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 fee for a petition.