“Zombie” trademarks have bedeviled trademark and service mark registration in the United States for years. Since proof of use need only be provided every ten years, marks can remain on the register long after they have gone out of use. These registrations may be for dead products or companies, but they are very much alive in terms of their effect of blocking new registrations and unfairly claiming rights to abandoned marks.
Following a pilot study to assess the problem, which did indeed show many such “zombie” marks, the USPTO created a Post Registration Proof of Use Audit Program in 2017, and some believe that they are increasing enforcement in this area. Marks selected for audit must provide proof of use in commerce and will be removed from the Register otherwise.
Is My Mark Subject to Audit?
There’s a good chance that this program doesn’t apply to your mark. In order to focus on the areas of highest abuse, the program covers only marks that have had six or ten year old declarations filed with allegations of continued use, and which claim at least one class with four or more goods or services, or at least two classes with two or more goods and/or services. Since a great many marks do not meet the multiple class/goods standard, such marks are not subject to audit.
What Happens if my Registration is Audited?
An Office Action from a post-registration examiner will issue saying that your registration has been selected for audit. It will identify two additional goods or services for each audited class. At that point, you must submit proof of use for each identified good or service.
Is “Proof of Use” the Same as the “Specimen” We Provided with our Renewal Declaration?
No! The requirements for Proof of Use for goods are much stricter than those for a specimen, and they differ when applied to goods versus services. Proof of use is evidence that clearly shows how you are using your mark in commerce on the identified goods or in connection with the services in your registration.
Some acceptable examples of proof of use for goods are:
• Photographs that show the mark on a tag or label affixed to the goods
• Hang tags or labels with the mark and the generic name of the specific goods on the tag or label
• Screen shots of webpages that show the mark being used in connection with the goods at their point of sale
• Photographs of the mark on packaging where the goods are visible through the packaging
• Photographs of the mark on packaging where the packaging identifies the specific goods included in the package.
Some acceptable examples of proof of use for services are:
• Copies of brochures or flyers where the mark is used in advertising the services
• Photographs of the mark on retail store or restaurant signs
• Photographs of the mark on service vehicles
• Screen shots of website printouts where the mark is used in the actual sale or advertising of the services.
Comparing proof of use to specimens, note that the following acceptable specimens, would not meet the criteria for proof of use:
• A hangtag by itself that does not identify the goods
• A label by itself that does not identify the goods
• Packaging by itself that does not identify or show the goods.
For services, proof of use is the same as a specimen. For more detailed information on the program, your rights and responsibilities, the USPTO has a well-written summary of the program on its website https://www.uspto.gov/trademarks-maintaining-trademark-registration/post-registration-audit-program.
BUSINESS TAKE-AWAY: Monitoring and being ready to provide adequate proof of use of a mark remains the mark owner’s responsibility, but there is now an increased emphasis on enforcing rules related to proof of use. Consider how you will provide proof of use before filing your next Section 8 or 71 declaration, just in case your mark is selected for audit. Why not make sure you have acceptable proof of use examples before being audited.