In response to a growing number of fraudulent trademark applications, the USPTO in 2012 established a pilot program to audit existing registrations. The audit found that for over half of the marks audited, the mark owners and/or their attorneys could not submit sufficient evidence of use.
The pilot program’s results prompted the USPTO to implement a permanent trademark registration auditing program to verify marks’ claimed use in commerce.
Since the program’s inception in November of 2017, the Post Registration Proof of Use Program’s examiners have audited almost 5,000 trademark registrations, including over 79% that were filed by attorneys. Of those registrations audited, well over half required amendment to remove goods or services.
The USPTO recently hosted an official webinar to explain the audit program and let practitioners know what to expect going forward. In the webinar, the USPTO highlighted that the data shows “lack of care, lack of knowledge about what the law requires, or both,” not only by pro se applicants, but also by counsel.
Audits are about to become more common.
Moving forward, the USPTO anticipates auditing approximately 5,000 registrations per year. The audits are chosen by a computer program that selects at random from all section 8 or 71 registrations that list four or more goods or services in a single class or two or more goods or services in two or more classes.
The webinar also stressed attorneys’ legal and ethical obligations to confirm their clients’ statements of use. A seeming warning, the webinar discussed briefly the 2017 Swyers case where the Office of Enrollment and Discipline excluded Matthew Swyers from practicing before the USPTO for at least five years for, among other infractions, submitting “fraudulent or digitally manipulated specimens.” You can find the Swyers order here.
Changes to Specimen Requirements
Relatedly, the webinar also discussed changes to requirements for specimens. Starting in October, all specimens should include images of not only the label but also the product. For example, it won’t be sufficient to submit a photo of a clothing label stitched to a piece of clothing. Instead, the photo should be zoomed out so that the entire shirt is visible, label and all. Screenshots of websites will need to include not only images of the goods or services offered but also the URL and the print date.
When specimens are complicated or images are difficult to interpret, examiners recommend submitting detailed explanations as well as charts, lists, or tables to help examiners assess the specimens.
Examiners also stressed the significance of not submitting stale specimens. That is: take a new photo each time, even if the product itself hasn’t changed. Old photographs do not demonstrate that the good or service is still in commercial use.
Those whose trademark applications are audited will need to submit timely responses and either need to submit evidence of use in all goods and services listed or to delete unused goods and services from their trademark registrations. For more information about the auditing program, go here.