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

30

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


http://www.ILMA.ORG

ILMA Compoundings - January 2020

Table of Contents for the Digital Edition of ILMA Compoundings - January 2020

LETTER FROM THE CEO
INSIDE ILMA
WHAT'S COMING UP
NEW MEMBERS
INDUSTRY RUNDOWN
COUNSEL COMPOUND
WASHINGTON LANDSCAPE
IN NETWORK
PORTRAIT
ILMA Compoundings - January 2020 - Cover1
ILMA Compoundings - January 2020 - Cover2
ILMA Compoundings - January 2020 - 1
ILMA Compoundings - January 2020 - 2
ILMA Compoundings - January 2020 - LETTER FROM THE CEO
ILMA Compoundings - January 2020 - INSIDE ILMA
ILMA Compoundings - January 2020 - 5
ILMA Compoundings - January 2020 - 6
ILMA Compoundings - January 2020 - 7
ILMA Compoundings - January 2020 - WHAT'S COMING UP
ILMA Compoundings - January 2020 - NEW MEMBERS
ILMA Compoundings - January 2020 - INDUSTRY RUNDOWN
ILMA Compoundings - January 2020 - 11
ILMA Compoundings - January 2020 - 12
ILMA Compoundings - January 2020 - 13
ILMA Compoundings - January 2020 - 14
ILMA Compoundings - January 2020 - 15
ILMA Compoundings - January 2020 - 16
ILMA Compoundings - January 2020 - 17
ILMA Compoundings - January 2020 - 18
ILMA Compoundings - January 2020 - 19
ILMA Compoundings - January 2020 - 20
ILMA Compoundings - January 2020 - 21
ILMA Compoundings - January 2020 - 22
ILMA Compoundings - January 2020 - 23
ILMA Compoundings - January 2020 - 24
ILMA Compoundings - January 2020 - 25
ILMA Compoundings - January 2020 - 26
ILMA Compoundings - January 2020 - 27
ILMA Compoundings - January 2020 - 28
ILMA Compoundings - January 2020 - 29
ILMA Compoundings - January 2020 - COUNSEL COMPOUND
ILMA Compoundings - January 2020 - 31
ILMA Compoundings - January 2020 - WASHINGTON LANDSCAPE
ILMA Compoundings - January 2020 - 33
ILMA Compoundings - January 2020 - IN NETWORK
ILMA Compoundings - January 2020 - 35
ILMA Compoundings - January 2020 - PORTRAIT
ILMA Compoundings - January 2020 - Cover3
ILMA Compoundings - January 2020 - Cover4
https://www.nxtbook.com/ygsreprints/ILMA/G126213ILMA_vol71_no6
https://www.nxtbook.com/ygsreprints/ILMA/G125546_ILMA_vol71_no5
https://www.nxtbook.com/ygsreprints/ILMA/G124996_ILMA_vol71_no4
https://www.nxtbook.com/ygsreprints/ILMA/G123886_ILMA_vol71_no3
https://www.nxtbook.com/ygsreprints/ILMA/G123315_ILMA_vol71_no2
https://www.nxtbook.com/ygsreprints/ILMA/G122980_ILMA_vol71_no1
https://www.nxtbook.com/ygsreprints/ILMA/G121540_ILMA_vol70_no11
https://www.nxtbook.com/ygsreprints/ILMA/G120882_ILMA_vol70_no10
https://www.nxtbook.com/ygsreprints/ILMA/G120035_ILMA_vol70_no9
https://www.nxtbook.com/ygsreprints/ILMA/G121XXX_ILMA_vol70_no8
https://www.nxtbook.com/ygsreprints/ILMA/G120XXX_ILMA_vol70_no7
https://www.nxtbook.com/ygsreprints/ILMA/G119XXX_ILMA_vol70_no6
https://www.nxtbook.com/ygsreprints/ILMA/G118112_ILMA_vol70_no5
https://www.nxtbook.com/ygsreprints/ILMA/G117382_ILMA_vol70_no4
https://www.nxtbook.com/ygsreprints/ILMA/G116888_ILMA_vol70_no3
https://www.nxtbook.com/ygsreprints/ILMA/G115555_ILMA_vol70_no2
https://www.nxtbook.com/ygsreprints/ILMA/G114774_ILMA_vol70_no1
https://www.nxtbook.com/ygsreprints/ILMA/g110500_ILMA_vol69_no12
https://www.nxtbook.com/ygsreprints/ILMA/g110500_ILMA_vol69_no11
https://www.nxtbook.com/ygsreprints/ILMA/g110500_ILMA_vol69_no10
https://www.nxtbook.com/ygsreprints/ILMA/g109884_ILMA_vol69_no9
https://www.nxtbook.com/ygsreprints/ILMA/g109284_ILMA_vol69_no8
https://www.nxtbook.com/ygsreprints/ILMA/g108494_ILMA_vol69_no7
https://www.nxtbook.com/ygsreprints/ILMA/g107507_ILMA_vol69_no6
https://www.nxtbook.com/ygsreprints/ILMA/g106483_ILMA_vol69_no5
https://www.nxtbook.com/ygsreprints/ILMA/g105803_ILMA_vol69_no4
https://www.nxtbook.com/ygsreprints/ILMA/g104743_ILMA_vol69_no3
https://www.nxtbook.com/ygsreprints/ILMA/g103647_ILMA_vol69_no2
https://www.nxtbook.com/ygsreprints/ILMA/g102869_ILMA_vol69_no1
https://www.nxtbook.com/ygsreprints/ILMA/g101930_ILMA_vol68_no12
https://www.nxtbook.com/ygsreprints/ILMA/g100836_ILMA_vol68_no11
https://www.nxtbook.com/ygsreprints/ILMA/g99200_ILMA_vol68_no10
https://www.nxtbook.com/ygsreprints/ILMA/g98468_ILMA_vol68_no9
https://www.nxtbook.com/ygsreprints/ILMA/g97711_ILMA_vol68_no8
https://www.nxtbook.com/ygsreprints/ILMA/G96767ILMA_vol68_no7
https://www.nxtbook.com/ygsreprints/ILMA/G95397ILMA_vol65_no6
https://www.nxtbook.com/ygsreprints/ILMA/G94323ILMA_vol68_no5
https://www.nxtbook.com/ygsreprints/ILMA/G93127_ILMA_vol69_no4
https://www.nxtbook.com/ygsreprints/ILMA/G91785_ILMA_vol68_no3
https://www.nxtbook.com/ygsreprints/ILMA/G90956_ILMA_vol68_no2
https://www.nxtbook.com/ygsreprints/ILMA/G89146_ILMA_vol68_no1
https://www.nxtbook.com/ygsreprints/ILMA/G87981_ILMA_vol67_no12
https://www.nxtbook.com/ygsreprints/ILMA/G85409_ILMA_vol67_no11
https://www.nxtbook.com/ygsreprints/ILMA/G83595_ILMA_vol67_no10
https://www.nxtbook.com/ygsreprints/ILMA/G81672_ILMA_vol67_no9
https://www.nxtbook.com/ygsreprints/ILMA/G80238_ILMA_vol7_no8
https://www.nxtbook.com/ygsreprints/ILMA/G79388_ILMA_vol7_no7
https://www.nxtbook.com/ygsreprints/ILMA/G78361_ILMA_vol7_no6
https://www.nxtbook.com/ygsreprints/ILMA/G77448_ILMA_vol7_no5
https://www.nxtbook.com/ygsreprints/ILMA/G75899_ILMA_vol67_no4
https://www.nxtbook.com/ygsreprints/ILMA/G75036_ILMA_vol67_no3
https://www.nxtbook.com/ygsreprints/ILMA/G72720_ILMA_vol67_no2
https://www.nxtbook.com/ygsreprints/ILMA/G72220_ILMA_vol67_no1
https://www.nxtbook.com/ygsreprints/ILMA/G70970_ILMA_vol66_no12
https://www.nxtbook.com/ygsreprints/ILMA/G69813_ILMA_vol66_no11
https://www.nxtbook.com/ygsreprints/ILMA/G67522_ILMA_vol66_no10
https://www.nxtbook.com/ygsreprints/ILMA/G66343_ILMA_vol66_no9
https://www.nxtbook.com/ygsreprints/ILMA/G64859_ILMA_vol66_no8
https://www.nxtbookmedia.com