Just like other government entities, the US Patent & Trademark Office (PTO) is designated to conduct regular audits of their system to ensure that both their system and users are in compliance with the set rules.
As the owner of a registered trademark, you may have paid your maintenance fees and are actively using the ® on your materials. But that doesn’t make you exempt from an audit. So, what do you do when you get a letter from the PTO that they are doing an audit?
First, Understand Why You Were Selected For An Audit
The PTO conducts audits to ensure the integrity of the U.S. registration system and the records contained therein. This helps to protect brand-owners by ensuring that the federal register includes accurate information. Though the process can seem daunting, it actually allows for businesses to have a better picture of third party marks and ownership. good record-keeping . Recognizing this before you start the process generally helps provide some comfort to the owners of the audited mark.
In most cases, audit selection is random and not based on any aspect of your particular record. However, some types of registrations and cases are more frequently selected for audit than others, especially if they include multiple classes. If you filed for registration of your mark without the help of a qualified Trademark Attorney, your record may include some markers that cause your registration to be flagged.
If you’re unsure about what aspects of your registration might be in question, this is a good time to consult with a Trademark Attorney who can help you understand what the PTO will require. Being prepared will make defending your registration through the audit process much easier.
Next, Prepare For Your Audit Response
When you originally applied for your trademark, you may remember that you were required to show bona fide use of a mark on the goods and services included in the application. Further, the mark must be used in connection with every item included in the registration. Unfortunately, there is a history of trademark owners who manufactured a fraudulent or false use of its mark for the purposes of obtaining registration. These actions are illegal, and can include anything from photoshopped product packaging, to counterfeit hang tags and labels as well as other unacceptable uses.
As the registrant of the audited mark, you are required to submit accepted proof of use of the mark for all goods listed in the registration. Understandably, your business may have grown and evolved since you originally registered the mark. It’s important that items for which the mark is no longer in use be deleted from the registration and addressed in the audit. Failure to comply with these rules may result in a loss of the trademark registration.
Prepare your audit response to answer each and every question brought up by the PTO auditor.
Be Sure To Comply With All Requirements
Once your audit has been completed, you are required to comply with all the requirements presented by the PTO auditor in order to maintain protection of your mark. If any of the requirements are unclear to you, be sure to have them explained or discuss them with your Trademark Attorney to make sure that you can continue to protect your brand with the benefit of federal registration.
You can learn more about PTO audits on the USPTO website here. If you receive an audit letter from the PTO and are unsure of what steps to take, contact an experienced attorney to assist in submitting your response. Don’t jeopardize your rights or the brand you’ve worked so hard to build.