What happens if you receive a post-registration office action regarding an “audit”? Registrants who receive an audit office action have to be very particular about the response and the options regarding evidence.
Many trademark registration renewal filing may receive Office Actions due to the USPTO’s audit program, which selects some renewal filings and asks the registrant for additional evidence of use.
Although this is a good program, it can still be frustrating when a registrant receives one of these Office Actions. The first important thing to know is that you must respond. If the registrant does not respond, then the entire registration may be canceled. The second issue is how to respond. The registrant can respond to the audit by either submitting additional evidence of use that addresses the goods or services listed in the audit, or deleting those items, or some combination of the two
Pro tip: when registering a mark and when renewing a registration for a mark, be proactive in terms of the scope of the goods and services. Keep the goods and services limited to what is actually in use: First, that is required when you’re going through the application process, and later, when you’re going through the renewal process, by deleting any unused goods or services, you’re going to reduce the chances that you have to go through this audit program, deal with the costs, the burdens, the hassle of having to respond to it, and the risks of having to respond to it—because if you don’t respond, you lose the entire registration.
Bottom line: Make sure your registration is properly tailored to the goods and services used in connection with the trademark. If you have questions about a renewal audit that you’ve received, reach out to us.
This was an edited transcript of my podcast Post-registration Trademark Audit Program.
