Introduction to Trademark Audits

In the United States, the trademark register is "use-based," meaning that trademark registrations are entitled to protection only so far as they are still being used in connection with the goods and/or services for which they're registered. 

According to the U.S. Patent & Trademark Office (the "USPTO"), “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.” [1]  

As part of its efforts to maintain the accuracy and integrity of the trademark register, the USPTO conducts random audits of trademark registrations to determine whether trademarks are still in use. [2] Such audits are conducted through the USPTO's Post Registration Audit Program and, as the name suggests, occur after a mark has already been registered, usually when maintenance or renewal filings are submitted. 

In general, there are two types of registrations that are vulnerable to audits, including registrations that: 

• identify four or more goods or services in at least one class, or

• identify two or more goods or services in at least two classes.

The USPTO will notify you if your registration is selected for audit and simultaneously request proof of use for some or all goods or services identified on your registration.

"Proof of use" is evidence showing how you are using your trademark in commerce. What constitutes proof of use will depend on whether your mark is being audited for its use on goods or services. For example, for goods, acceptable proof of use may include photos of the mark on a tag or label affixed to the goods, photos of the mark on the packaging of the goods, or webpages showing the mark used in connection with goods at their point of sale. For services, acceptable proof of use may include brochures with the mark to advertise services, photos of the mark on retail signage or delivery vehicles, or webpages showing the mark being used in the sale or advertising of the services. 

If for any of the audited items you are unable to provide proof of use, or excusable non-use, you may respond to the USPTO by deleting all the items your mark is no longer used with (not just the items selected for audit). Deletion requires you to pay a fee, and many times will result in an additional audit.

That said, registrants and applicants alike should be aware that it's possible to avoid trademark audits by either:

• voluntarily deleting unused goods or services prior to an audit, or 

• limiting your application on the outset to include only a minimal number of goods or services.

Footnotes:

[1] See https://www.uspto.gov/trademarks/maintain/post-registration-audit-program#Background.

[2] Id.

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