I’ve recently had a couple of instances over the last 12 months where the Trademark Office audited a client’s registration. Apparently, in recent years, the USPTO has added an extra layer of oversight to ensure that trademark owners are maintaining only the rights they’re entitled to. This is where trademark registration audits come in.
A trademark audit is a review by the USPTO to verify that a registered trademark is actually in use for all the goods and services listed in the registration. During an audit, the USPTO will require you to provide additional proof of use — beyond the samples (specimens) you submitted when you renewed your registration. Specifically, they’ll ask for evidence for two additional goods or services per class in your registration, chosen at random.
If you can’t show current use for the audited items, you must delete them from your registration. If the audit reveals that more deletions are necessary, the USPTO may require you to prove use for every item in the registration.
The USPTO conducts random audits each year on certain trademark registrations during their maintenance filings — specifically:
- Section 8 Declarations (filed between the 5th and 6th year after registration)
- Combined Section 8 & 9 Renewals (filed every 10 years)
The USPTO randomly selects about 10% of registrations for audit after these filings are submitted.
Certain registrations raise red flags for the USPTO and are more likely to be audited. These can include:
- Registrations with a Large Number of Goods/Services
- Registrations with a wide range of unrelated products or services
- Registrations Covering Multiple International Classes
- Unusually Broad or Vague Descriptions (e.g. “computer software, or “clothing”)
If your registration is selected, you’ll receive an Office Action requesting additional proof of use. You’ll need to respond within six months (no extensions) with clear, dated evidence showing your trademark in actual use for the specified goods/services.
Practical tips:
- Keep thorough records of how your trademark is used in commerce.
- Regularly review your registration to remove goods/services no longer in use.
- Be responsive — failure to reply can lead to cancellation of the entire registration.
If you need additional information about a Trademark Office audit, please call Bert Andia, 336-273-1600.