Trademark Security Check Point – Draining the Swamp with Random Audits of Trademark Use
Despite flying with TSA pre-check, random checks in airport security lines seem to be a thing for me. Just last week, a TSA officer randomly wiped down all of my electronics with what looked like a fat piece of litmus paper and then stuck the paper into a futuristic machine for further analysis. Lucky for me, I carry honest electronics.
On March 21, 2017, the USPTO will begin randomly checking declarations of use, not looking to find what trademarks owners possess but instead looking to crack down on what trademark owners are lacking. The USPTO recently published a final rule (82 Fed. Reg. 6259) establishing a random audit program to ensure that trademark owners attempting to renew their trademark registrations are indeed using their trademarks in connection with every good and/or service in what may be a laundry list of goods or services in a single class. So, if you own a trademark registration that identifies multiple goods or services in a single class, be prepared to submit additional evidence of your mark being used in connection with any one of the goods or services identified in your registration.
Specifically, ten percent of Section 8 and 71 Declarations of Use will be subject to the audit. A Section 8 Declaration is a statement made to the USPTO averring that your federally registered trademark has been in use continuously for a period of five years, and a Section 71 Declaration is essentially the same thing but applies to applications generally filed by international applicants under the Madrid Protocol.
Under the current rules, upon filing a Section 8 or 71 Declaration of Use, a registrant is required to submit a specimen showing evidence of the mark being used with at least one good or service in each class identified in the application. This has not changed. However, for a random ten percent of such registrants, the USPTO will next issue an Office Action requiring additional proof for particular goods or services identified in the registration and not already accounted for. Here comes the random pat down. Registrants will have six months to respond by either submitting evidence of use or simply deleting the goods and services from the registration.
The rule was prompted by a pilot program, during which fifty-one percent of the registrations pulled at a security checkpoint for random screening were unable to submit evidence of commercial use for the additional goods and services required. In particular, the USPTO hopes to whittle down registrations filed under the Madrid Protocol, which generally contain a much broader listing of goods and services than do applications filed with the USPTO. The Office also wants to drain the registry of registrations of goods and services that are not in fact being offered with a particular brand name. After all, trademark rights are based on using the mark in commerce.
In sum, you own a trademark registration for LIZZIE BOO for use in connection with shirts, shorts, overalls, jackets, shoes, and hats, all in class 25. You submit a Declaration of Use showing evidence of shirts. Do not be surprised if the USPTO randomly pulls you aside and requires you to submit additional evidence of those overalls. If LIZZIE BOO overalls have been discontinued, well then, drain them from the registration.
Photo Cred: M.O. Stevens. Creative Commons Attribution 3.0 Unported license. https://commons.wikimedia.org/wiki/File:Portland_International_Airport_security_check.jpg.
The author of the photograph in no way endorses me or my use of this work.