USPTO to Target Fake Trademark Specimens of Use With Expanded Audit Program

Hoping to crack down on the ever-increasing problem of overbroad trademark registrations and fake specimens of use, the United States Patent and Trademark Office (“USPTO”) has announced that it will expand its existing audit program, currently conducted on a random basis, to include directed audits for certain trademark filings.  

In contrast to many jurisdictions, the United States requires that trademark owners periodically demonstrate that their marks remain in active use in commerce to avoid cancellation of their registration.  This policy furthers the USPTO’s goal of keeping the trademark register relatively free of registrations for marks not actually used in U.S. commerce. Over the years, however, many registrants have sought to keep their registrations alive in connection with all of the goods or services listed in the registration certificate, even though the mark may only be used for some of those goods or services (if any at all). 

To evaluate the accuracy of use claims in registration maintenance filings, the USPTO launched a random audit pilot program in 2012, which found that fifty-one percent of the trademark registrations randomly selected for an audit could not show use of the registered mark in connection with all of the goods and/or services claimed in the declaration of use filed under Section 8 of the Lanham Act (the “Act”) (15 U.S.C. § 1058) or Section 71 of the Act (15 U.S.C. § 1141k). 

Under the program, made permanent in 2017, registrants randomly selected for an audit need to submit specimens of use, exhibits, affidavits or declarations, and other relevant information to prove the mark’s active use in commerce in connection with goods and services claimed in the registration.  The random audit program aims to ensure that the register (1) accurately reflects marks that are actively in use for all the goods and services claimed in the registration and (2) informs the public about the availability of a chosen mark.

Since the adoption of this program, however, the USPTO has become aware of systemic efforts to circumvent the requirement for showing current use of registered marks in the ordinary course of trade.

For example, the USPTO has seen submissions that appear to be digitally created or altered mockups of specimens.

The USPTO has also seen a pattern of documents that appear to have been produced using specimen “farms.” These “farms” are e-commerce websites created solely for the purpose of generating specimens to subvert the USPTO’s requirement to show use of a mark in commerce in connection with the goods listed in the registration. 

To combat these issues, the expanded audits will focus on Section 8 and 71 filings that appear to contain digitally altered specimens or printouts from a specimen farm. The new directed audit program will work very similarly to the already established random audit program: the USPTO will issue an initial office action to request proof of use for some or all of the goods or services covered by the registration and request any additional information deemed relevant by the USPTO, especially for post-registration maintenance documents exhibiting signs of fraudulent or digitally manipulated specimens.  

One of the key takeaways for trademark owners is that they should not attempt to cling to every item listed in their trademark registrations. In particular, those registrations that contain a long list of goods or services (for example, registrations filed under the Madrid Protocol) should be carefully reviewed before filing a declaration of use under Sections 8 or 71.  And registrants certainly should not attempt to circumvent the rules by submitting sham specimens of trademark use, as those filings would receive increased attention from the USPTO.  

Hopefully, this change will serve as a deterrent to registrants looking to deceive the USPTO and remove unused marks from the register, making it a more accurate reflection of the marks actually used in U.S. commerce.