What Happens in a USPTO Post-Registration Trademark Audit?

You filed your Section 8 declaration with a specimen for each class and expected a routine acceptance. Instead, an office action arrives asking for proof of use on two more goods in each class. That is a USPTO post-registration audit, and it is not an accusation. The USPTO selects declarations at random to check whether the register reflects what owners actually sell. The stakes are real, though: goods you cannot prove are deleted, a fee attaches to each deletion, and a registrant who does not respond at all loses the entire registration. Our trademark renewal and USPTO audit response practice prepares every maintenance filing as if it will be audited, because a meaningful share of them are.

Which filings a USPTO post-registration audit targets

The program covers Section 8 declarations and Section 71 declarations for Madrid Protocol registrations. Selection is random among filings that list several goods or services, either a longer list within one class or multiple classes with more than one item each. A registration for a single product in a single class is rarely audited; a registration that claims clothing, bags, jewelry and cosmetics is a natural candidate. The audit is issued as an office action after you file, with a response deadline stated in the action. The USPTO has said it may also audit filings that show other signs of a questionable use claim, so a suspicious specimen can draw attention on its own.

What the audit office action demands

The action identifies specific goods or services beyond the ones your specimen already covered and asks for proof of use for each of them as of the filing date of your declaration. Acceptable proof is the same as an acceptable specimen: a photograph of the product bearing the mark, packaging, a label, or a web page showing the mark with the product and a way to order it, with the URL and access date visible for web pages. For services, advertising or a web page showing the mark used in connection with the service.

You have two choices for each audited item: prove it or delete it. There is no option to argue that the good is closely related to one you did prove, and there is no excusable nonuse argument for individual items within an audit. If you were not using the mark on that product on the date you signed the declaration, the honest response is deletion.

Deletion fees and the second audit action

Deleting goods in response to an audit carries a fee per class, charged because the deletion comes after the declaration was filed. Deleting the same goods before you file costs nothing. That difference is the entire argument for reviewing the goods list carefully before the Section 8 goes in, a step we describe in when a Section 8 declaration is due.

The second-action risk is less well known. If your response to the first audit action deletes any of the audited goods, the USPTO may issue a second action requiring proof of use for every remaining good and service in the registration. In other words, one admission that the list was too long leads to a check of the entire list. Registrants who prove everything in the first response close the audit; registrants who delete should expect a broader request and should prepare the evidence for the rest of the list before replying.

A registrant who fails to respond to the audit action at all does not merely lose the audited goods. The entire registration is cancelled.

How to prepare before you file the Section 8

Three habits make an audit a formality:

• Walk through every listed good and service with someone who knows current sales, and delete anything that is not on the market under the mark on the day of filing.
• Collect dated proof for every item that stays, not just one per class, and store it with the filing.
• Confirm that the mark on the products matches the mark as registered, since a redesigned logo can fail as proof even where sales are strong.

If a licensee sells some of the goods, gather proof from the licensee too, along with the license showing your quality control, because the licensee’s use counts as yours only under a controlled license.

Businesses with several registrations usually keep this evidence file as part of their docket, so that the proof exists before the audit asks for it. Our IP portfolio management service runs that process, and our post on IP docketing explains how the deadlines fit together.

Responding when the audit arrives

Calendar the response deadline immediately and check whether the correspondence address on the registration is still current; audits sent to a former law firm or a departed employee are a common way to lose a registration without knowing it. Then match each audited item against your evidence file. Where proof exists, submit it with a short explanation. Where it does not, delete the item and accept the fee. If the facts are close, for example a product sold only through a distributor or only in one state, a response that explains the use with supporting documents is better than a quiet deletion, since any sale in commerce regulated by Congress can qualify. The response is filed like any other post-registration office action, and our trademark office action responses team handles the drafting.

Why the audit matters beyond the audit

An overbroad goods list is more than an audit risk. A declaration that claims use on goods never sold can be attacked by a competitor as fraud in a cancellation proceeding, and goods that were never used are exposed to an expungement petition for years after the declaration is accepted. The audit program is the USPTO’s way of catching those claims early; a careful registrant catches them first.

If you have received a post-registration audit, or your Section 8 window is open and the goods list is long, Capitol Law Partners can review the list, assemble proof and respond before the deadline. Schedule a consultation.

This article is for informational purposes only and does not constitute legal advice. No attorney-client relationship is formed by this communication.

Attorney Cagatay Ersoy. Practical strategy for founders, investors, and growing companies.

Need help with this topic? See our USPTO audit and trademark maintenance page or schedule a consultation.