The United States Patent and Trademark Office (“USPTO”) has recently announced big changes to their Proof of Use Audit Program (“Audit Program”). Specifically, the USPTO stated that it has increased the number of staff members assigned to work on the Audit Program, and that it will double the number of post-registration audits it conducts to 5,000 per year.
How does the Audit Program Work?
The Audit Program works by randomly selecting trademark registration renewals filed in a given year, and requiring the chosen registrants to provide proof of use for at least two additional goods or services per class. If the registrant cannot demonstrate use, the USPTO institutes a partial cancellation of those goods and services. The USPTO has recently noted that over 50% of all audited registrations have resulted in a partial cancellation of goods and services.
What does this Mean for Registrants?
As we have recently explained, the USPTO has introduced new trademark fee proposals that, if instituted, would levy a $100 fee for each good or service deleted from a registration following a post-registration audit. The increased number of audits, along with potential fees for amending goods and services listings, could dramatically increase the consequences and costs for registrants with overly-broad goods and services listings.
Next Steps
The USPTO’s proposed and implemented changes highlight the need for applicants and registrants to take seriously, and act upon the U.S. requirements that applications be filed for only those goods and services as to which there is a bona fide intent-to-use, and registrations only be maintained for those goods and services actually offered in commerce within or with the U.S. Our Hogan Lovells U.S. Trademark Team is well-positioned to assist our clients in managing their portfolios through these new requirements. For questions concerning the Audit Program or for further information regarding best-practices for drafting and prosecuting U.S. applications, please contact Julia Anne Matheson.
Authored by Julia Matheson and David Brzozowski
