The U.S. Patent and Trademark Office (“USPTO”) is cracking down on inaccurate, improper, or fraudulent claims that a trademark is being used. Effective January 2, 2021, the USPTO will impose a $250 fee per Class if any goods are deleted from that Class due to an audit or during the examination of a registrant’s maintenance filing. Failure to pay the deletion fee will result in the cancellation of the entire registration in every Class.
Federal Trademark Registration — and the Claim of Numerous Types of Goods
Federal registration of trademarks is based on actual use of a mark in interstate commerce in the United States. When obtaining or maintaining a registration, an applicant or registrant need provide only one specimen showing the trademark as used in connection with each International Class of goods or services. Even if a trademark claims numerous goods in a Class, a single specimen in that Class will be sufficient to obtain a registration. In addition, since an applicant only pays one filing fee per Class (rather than per good), it is tempting to list as many items as possible in a Class rather than risk leaving something out.
Unfortunately, many trademark owners (and their lawyers) claim long lists of goods in a Class without confirming that each and every good is or will be sold in the U.S. marketplace. Sometimes this practice is due to unfamiliarity with the U.S. Trademark Act, oftentimes by foreign applicants and registrants. Sometimes it is due to laziness or cursory verification practices. And sometimes it is due to … well, fraud.
In an effort to combat these practices and ensure the integrity of the trademark registry for brand owners seeking to determine the availability of a trademark, the USPTO has been conducting random audits of trademark registrations when a Statement of Use or a Declaration of Use is filed and when a registration is renewed. These audits have whittled down some registrations’ overly long lists of good and services and weeded out other registrations that should have been removed from the Principal Register of Trademarks entirely.
What Trademark Owners Need to Know
It is imperative that trademark owners provide accurate information about the use of each and every good and service in their registrations. When maintaining a trademark registration, checklists are helpful to verify actual use for each product and service. Trademark holders should periodically keep records (such as photos or JPEGS) of their trademarks on each product, packaging, or labeling for goods, and copies of print advertising, promotional materials, and website screenshots (showing the date of the screenshot) for services.
Inaccurate filings and sloppy recordkeeping practices will not only result in this new deletion fee but will also incur higher attorney’s fees and loss of employee time when hunting down proof of use for every listed product or service.
If you have any questions, please contact IP attorney Art DeBaugh.