ILMA Compoundings - January 2020 - 30

COUNSEL COMPOUND

USPTO: Use It or Lose It
By Jeff Leiter

O

ver the course of the year, we
receive a fair number of inquiries from ILMA members
about protecting intellectual property.
These inquiries cover trademarks,
service marks, copyrights and patents.
For this month's column, I would like
to focus on trademarks, particularly
the U.S. Patent and Trademark Office's
(USPTO) new auditing program
intended to promote "the accuracy and
integrity of the trademark register." In
short, USPTO's audit program will
take trademark renewal filings as an
opportunity to make the trademark
owner show actual use in order to
renew the trademark.
Let's start with a refresher. A
trademark generally is a word, phrase,
symbol or design, or a combination of
them, that identifies and distinguishes
the source of the goods of one party
from those of others. Thus, a trademark typically protects brand names
and logos used on goods. A service
mark is the same as a trademark,
except that it identifies and distinguishes the source of a service instead
of goods. A copyright protects an
original artistic or literary work, while
a patent protects an invention.
For example, an ILMA member
might apply for a patent to protect a
new lubricant formulation. Then, it
would apply to the USPTO to register
a trademark to protect the brand
name of the lubricant. The company
also might register a copyright for
materials used to market the product.
In response to what it believed
was an increase in the number of
fraudulent trademark applications,
the USPTO created a pilot program
in 2012 to audit existing registrations.
The USPTO found from this pilot
program that, for over one-half of the

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JANUARY 2020

| COMPOUNDINGS | ILMA.ORG

trademarks it audited, the trademark
owners or their attorneys could not
submit sufficient evidence of actual
use. The pilot program's results
prompted the USPTO to implement
its permanent auditing program to
verify trademarks' claimed use in
commerce.
Since the audit program's inception,
the USPTO has reported that its Post
Registration Proof of Use Program's
examiners have audited almost 5,000
trademark registrations, including over
79% that were filed by the owners'
attorneys. Of those audited registrations,
more than half required amendment to
remove goods or services.
So, here's how the audit program
works, and we'll consider trademarks
and service marks as the same. After a
trademark registration is secured from
the USPTO, the trademark's owner
is required to make periodic maintenance filings in order to maintain
the registration. The USPTO's audit
efforts focus on existing trademark
registrations that have either (i) four
or more goods or services listed in a
single class, or (ii) at least two classes
with two or more goods or services.
When the trademark owner submits
the required maintenance or renewal
filings at the six-year deadline, the
USPTO will decide whether to
audit the registration. If a trademark
renewal is selected for audit, the
USPTO will notify the owner, requiring it to respond within six months to
avoid cancellation of the registration.
After the owner responds to the
USPTO, one of its examiners will
(i) identify particular goods and
services for which the owner must
provide additional proof of use, and
(ii) encourage the owner to delete
voluntarily any goods or services for

which the owner cannot provide proof
of use, even if the USPTO did not
request proof of use for the particular
good or service.
If the owner is unable to provide
acceptable proof of use of the trademark or if it elects to delete voluntarily
any goods or services, the USPTO
will send a second notice, requiring
proof of use for all the remaining
goods and services in the registration.
If the owner is unable to provide for
a second time acceptable proof of
use or voluntarily delete any goods
or services in response to this second
office action, the USPTO will send a
third and final office notice, deleting
all goods and services without acceptable proof of use and advising that the
trademark registration will remain in
force for only those goods or services
for which an acceptable specimen has
been provided.
Then, if the trademark owner fails
to provide a timely response to any of
the foregoing actions by the USPTO
or takes other corrective action within
the required period, the trademark
registration will be canceled by the
USPTO in its entirety.
With the USPTO audit program
in place, here are some of my tips for
ILMA members to protect their trademarks. Based on the USPTO's audit
selection criteria noted above, the
company should consider proactively
deleting "stale" goods and services no
longer offered under the trademark.
Even though ILMA members, as
trademark owners, should be carefully
reviewing the goods and services listed
in any trademark registration they
own on a periodic basis, preemptively
removing stale goods and services
could avoid triggering a USPTO audit.
Continued on page 33
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ILMA Compoundings - January 2020

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