Legal Strategies Available to a Trademark Holder Who is Facing a USPTO Post-Registration Audit

The federal regulations that govern the United States Patent and Trademark Office are generally located in Title 37 of the Code of Federal Regulations. There are a number of provisions that are important to review, but arguably the most relevant sections are located between 37 C.F.R. § 2.161 through 2.168.

Importantly, there is a relatively new initiative that is being used to “clean-up” the trademark database that is based upon the requirements of Title 37. All holders of a trademark granted by the United States Patent and Trademark Office (USPTO) should be aware of this so-called clean-up of the trademarks. Its purpose is to address the problem of potentially superfluous and overly expansive registrations. It requires the trademark holder to validate their use within the descriptions covered by their current trademark registration.

In order to maintain their registration, trademark owners are required to submit to the USPTO periodic filings under Section 8. They are also required to confirm to the USPTO their ongoing use of the underlying trademark with regard to each of the registered-for goods and services descriptions.

This means that—notwithstanding the required scrutiny the selection of goods and services descriptions would have already received in the course of the initial review of the trademark application—the registrant must also in the course of submitting the Section 8 filing sign an affidavit reaffirming that use. They must also submit materials in the form of a specimen to validate such use.

Importantly, the USPTO’s Post-Registration Audit Program has resulted in many trademark owners receiving Post-Registration Office actions to audit the full registration that is the subject of a renewal. Typically, this will mean that the Examining Attorney will review the complete list of registered goods and services to select a few test descriptions and then require specific specimens be submitted in regard to them.  If the registrant does not adequately do so, the entire registration may be deemed to have not passed the renewal process and be subject to cancellation.

Under such circumstances, the first step would typically be that the registrant would need to delete the description; pay a deletion fee; remit an additional delinquency fee; and finally validate every other description within that class.

Based upon the foregoing when preparing the Section 8 renewal, it is critical to ensure the proper and full use of the mark across all descriptions.  Accordingly, both those filings and the responses to any corresponding post-registration office actions should be reviewed carefully to fully evaluate the proof of ongoing use.

The following are five frequently asked questions relating to USPTO post-registration audits.

 FAQ #1. How do I show “proof of use” within the description upon which my trademark was granted?

The USPTO will generally accept a variety of evidence that the trademark holder is sufficiently utilizing the trademark “in commerce on the identified good or in connection with the services in [the] registration.” Examples of such proof of use are included in the USPTO’s post-registration audit program summary as follows:

Examples for goods:

• Photographs that show the mark on a tag or label affixed to the goods
• Hangtags or labels with the mark and the generic name of the actual goods on the tag or label and informational matter that typically appears on a tag or label in use in commerce for these types of goods
• Screenshots of webpages with the URL and access or print date that show the mark being used in connection with the goods at their point of sale
• Photographs of the mark on packaging where the goods are visible through the packaging
• Photographs of the mark on packaging where the packaging identifies the generic name of the goods included in the package.

Examples for services:

• Copies of brochures or flyers where the mark is used in advertising the services
• Photographs of the mark on retail store or restaurant signage
• Photographs of the mark on service vehicles
• Screenshots of webpages with the URL and access or print date where the mark is used in the actual sale or advertising of the services.

 FAQ #2. Do I need to submit a specimen for every selected description?

Not necessarily. Admittedly, when submitting a Section 8 renewal filing, the registrant must certify their ongoing use across all of the goods and service descriptions. However, specimens are only required to be submitted for each class of goods or services. Nevertheless, it is recommended practice for trademark owners to conduct their own internal audit at this stage to confirm such use before submission of the filing.

If the registrant is able to submit proof for each of the audited goods and services descriptions, they may not need to provide proof of the others within that class (at least not within that office action response).

Having said that, if they are unable to identify proof of use within the audited goods and services, they may be required to submit proof for all remaining descriptions within the registration.

FAQ #3. What happens if I do not have proof of ongoing (and prior) use for the audited goods and services?

If the registrant cannot provide proof of ongoing (and prior) use of the selected descriptions, the registrant will need to respond to the USPTO disclosing that fact and requesting that those descriptions be deleted from the registration.  A deletion fee will need to be paid, which will presumably trigger an audit of the entire listing of goods and services within that class.  The registrant will then be required to validate the use and submit specimen evidence of the mark’s use within each of those goods or services. Likewise, the registrant will need to delete those for which it cannot do so.  A deficiency fee may also be charged by the USPTO based upon the purported misstatement in the initial Section 8 filing that the mark was being used across all of the descriptions.

 FAQ #4. Can I just create materials now?

Generally speaking, the registrant is required to provide proof of use of the registered mark that was in use at the time of the initial Section 8 filing and is representative of continuous, ongoing use of the mark during the period since the mark was registered.  It is generally not advisable to create new material to satisfy the office action.

FAQ #5. Why is the USPTO conducting these post-registration audits and what has been the result so far?

The rationale for the audits is to “clean-up” the trademark database so the registrations that have been granted by the USPTO are actually being used in commerce as per the statutes and regulations. The aim is to delete any trademarks that are either no longer being used or that are being used, but not within the four corners of the description for what is being protected.

The USPTO has declared the program a successful thus far. As of early 2025 the USPTO reported that it has resulted in the cancelled or removal of goods or services “in more than 50% of audited registrations.”

 FAQ #6. Is there another procedure that I can utilize if I disagree with the Examining Attorney’s findings or if a Final Office Action is issued?

There is an alternative to all of this. The USPTO procedure allows a trademark holder to file a petition to the director. The purpose of such a  petition is to review the action that the examining attorney/auditor took. The procedure is fairly straightforward. However, it might be considered a longshot unless there is a clear reason that the director should overrule the audit examiner’s determination.

The Nissenbaum Law Group can Provide Legal Strategies for Post-Registration Audit Trademark Inquiries

The Nissenbaum Law Group has a robust legal practice representing trademark holders in a variety of legal matters such as registrations, infringement lawsuits, and post-registration audits. The legal and regulatory framework for doing so is complex, and the firm welcomes inquiries from trademark holders facing such post-registration audits, as well as those needing general legal representation.