Overview of the USPTO’s Audit Program and Proposed Fee Increases in 2020
On August 28, 2019, the United States Patent and Trademark Office (“USPTO”) announced proposed changes to increase fees for a number of trademark-related matters. The new fee schedule will go into effect in August 2020, if adopted.
The USPTO has proposed these fee increases as it attempts to improve the integrity of the Register through stronger oversight of evidence of use submitted by trademark holders at the time of renewal.
These fee adjustments, coupled with the USPTO’s trademark audit program that was implemented in November 2017, are important developments that should help to deter fraud before the USPTO.
One significant proposal is a fee of $100 per deleted good or service from a registration following the issuance of a post-registration audit received at the time of renewal. As background, in 2012, the USPTO launched a pilot program to assess the accuracy of claims of use in registration maintenance filings. The findings uncovered significant instances of registrations being renewed for goods or services for which the registrations were not in use. The results of the pilot program justified the need for new measures to encourage registration owners to file accurate declarations of use.
Subsequently, in November 2017, the USPTO launched a permanent audit program that targeted registrations where a Section 8 or 71 declaration of use was submitted, and the registration contained at least one class with four or more goods or services, or at least two classes with two or more goods or services.
于是在2017年十一月，USPTO建立了永久性的审查程序，主要针对提交了Section 8 和71使用申报的商标注册，如果该商标注册（1）包括至少一个包含四个或以上商品或服务项目的类别，或者（2）包括至少两个包含两个或以上商品或服务项目的类别。
The program randomly selects trademark registration renewals that meet the above criteria and requires registrants to provide proof of use.
In the event of an audit, a post-registration examiner will issue an Office Action and will identify the audited goods or services for which proof of use must be submitted.
Currently, the goods or services subject to the audit may be deleted without penalty to the Registrant.
The proposal would require payment of a $100 fee per deleted good or service after an audit is received, thus providing significant incentive for registrants to be more vigilant in confirming use of all goods and services listed in the registration.
Notably, the USPTO has also announced that it has increased the number of staff members working in the audit program, which is expecting to double the number of audits. The USPTO anticipates auditing up to 10% of the declarations of use filed under Section 8 or 71 on an annual basis. To date, approximately 5,500 registrations have been audited under the pilot and permanent program. The USPTO estimates that 5,000 marks will be audited per year under the audit program.
值得注意的是，USPTO宣布其将投入双倍的人力来实施这个审查程序，这意味着未来将有双倍的商标注册被审查。USPTO估计其每年将会对至多10%的Section 8 和 71使用申报发起审查。到今天为止，试验程序与永久程序总计已经对大约5500个商标注册进行了审查。USPTO估计未来每年将审查5000个商标。
These changes, in conjunction with the proposed fee increases, if they go into effect, may have a notable impact on reducing fraudulent registrations before the USPTO.
The final proposed fees are expected to be published in April 2020 in the U.S. Federal Register. Any approved fee increases will go into effect in August 2020.