Hello everybody and welcome to the trademarks
Post registration Audit program webinar.
We're very happy to have you here.
Today. We're going to get started
in just a couple of minutes,
but first we have a couple of housekeeping
things that we need to take care of first.
By the way, my name is Jason Lott on the
attorney advisor for trademarks customer outreach at
the United States Patent Trademark Office,
and for those of you have seen me before,
don't worry, I am I'm only hosting today.
We have two really great experts who are
going to be talking through the program.
With you today, so we're going to get
to that in just a couple of minutes.
So just a couple of things to keep
in mind because I know someone who
want to want to ask the question,
is this being recorded and the answer is yes.
Yes, it is. This session is being recorded.
It's going to be posted to our
website in about 3 weeks.
Close to a month.
It kind of depends on how things go.
It's going to be posted to the same
event page where you probably found
out about this event so it will be a
copy of that there as well as on the
trademarks webinars series page as well.
And at the very end of the program
today I'll just show you very briefly.
Where to find that on the website?
In case you just found us on Eventbrite
and have never ever ever been to
the uspto.gov website before.
Also the slides are going to be available
as well when you logged in for the
event today you should have seen an
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so hopefully you did that.
If not,
feel free to do so at anytime with
regards to communicating with us today.
The chat is going to be open,
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If you have questions about the presentation
about the presentation today or about the
post registration audit program in general,
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Send your questions there.
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So without we're going to actually
get going here, an actually get to
the real substance of the program.
This is the post registration audit
program and we're very lucky today
to have two excellent individuals.
And actually,
if you want to talk about folks who
know more about the program than
probably anybody else on Earth,
it's our two speakers.
Today we have Montia Pressey.
She is the senior supervisory
attorney and the USPTO's Office
of Trademark Quality Review
And Training and the manager of the
Post registration audit program.
She first joined the USPTO in 1995
as an examining attorney and she
left for several years to work as an
associate for a DC based intellectual
property law firm where her practice
focused on trademark prosecution,
client counseling,
and providing advice in proceedings before
the trademark trial and Appeal board,
and then, thankfully,
she returned to us in 2004 and she
is worked in the office of the
Deputy Commissioner for examination
policy as a petitions attorney,
a legal liaison to the post registration.
Vision and a senior staff attorney
in the Office of Trademark Quality.
Review and training.
Montia received her law degree from
Georgetown University Law Center and
her undergraduate degree from the
University of Virginia. also with us
Today is Jordan Baker, Jordan
Joined the USPTO as an examining attorney
in 2005 and is now an attorney in
the USPTO's Trademark Innovation
Lab Law Office and
Since 2015,
he has participated in a number of work
projects in the post registration area,
including in his current role
as lead attorney.
For post registration audit
program. as lead attorney,
Jordan handles the day-to-day
operations of the program,
assisting with training and providing
guidance to audit examiners advising
on IT matters related to the audit and
responding to questions from internal
and external customers about the program.
Jordan received his law degree
from George Mason School of Law
and his undergraduate degree from
the University of Maryland,
so that's our introductions.
Oh,
at this point I'm going to hand it
over to Montia, and she is going to.
Begin the presentation. Thanks so much.
Thank you Jason so much.
Hello everyone,
it's great to be with you today.
I'm going to go ahead and get started,
so sorry bout that.
Alrighty we are going to be talking
about a number of topics today.
Here they are.
The first is we're going to start
with a review of the significance
of use in commerce we'll discuss the
history of the audit program. we'll
Then review audit procedures which
were revamped earlier in the
year and tell you the results to date
we'll also talk about responding to
an audit using the T's response to
office action form which includes
some audit specific features and we'll
finish by sharing some suggestions
on what you can and should be doing
to prepare for a possible audit.
Already, so getting started with
significance of use in commerce.
As you know, generally use in
commerce is required to register
a trademark in the United States,
exceptions being Richard registrations,
And marks registered under section
44 E based on a foreign registration
that means in applications listing
only goods and services in use or for
which there is a bonafide intent to
use at the time of filing and in post
registration maintenance declarations.
Any goods and services not in use and for
which excusable nonuse cannot be claimed.
Should be deleted from the registration.
You are likely aware that the Trademark
Modernization Act includes new
registration cancellation mechanisms,
expungement,
every examination which allowed
third parties,
and the USPTO director to challenge
a registration based on evidence
that the registration did not adhere
or is not currently adhering to
statutory use requirements.
We are really excited to be adding these
two new tools to help us in reducing
clutter and to better protect the
integrity of the trademark register.
Accurately listing goods and services in
use when filing any submissions before
and after registration is critical to
the accuracy of the trademark register.
Inaccurate use claims can result
in the cancellation or loss of a
registration they contribute to the
Deadwood on the trademark register.
The claims can lead to unnecessary
likelihood of confusion
Refusals based on ID's that don't
reflect current use or even a
bona fide intent to use a mark in
commerce and the claims diminish
the registers utility to the public.
Making it really difficult to
evaluate what marks are available
for new business opportunities.
And as you're aware,
the Trademark Act imposes specific
requirements for use of a mark to
qualify as use in commerce in order to
enjoy the great trademark benefits and
protections that we have in the US for goods.
The marks must be placed on the goods,
their containers or affixed tags or labels,
or associated displays,
and the goods must be sold or
transported in commerce. for services.
The mark must be displayed in the
sale or advertising of the services,
and the services must be offered in commerce.
And use cannot be mere token use.
Instead,
use must be as a source identifier
and in the ordinary course of trade.
Turning next to the history
of the audit program.
An impetus for the program was the
Bose Corp decision in 2009,
which prompted serious discussions
within the USPTO about the
landscape of the trademark register.
Recall that in BOSE the CFC held
that was insufficient for a party
alleging fraud to prove only that
another should have known of
the falsity of its statement.
The court stated that instead
proof of a false material
representation made with
the intent to deceive.
the USPTO was required at a public
roundtable about a year after bose
the office consider the impact
of that decision on the Federal
trademark registration system.
Among the questions raised
during the panel discussion was
might the higher threshold for
proving fraud reduce the risk
associated with filing inaccurate
identifications of goods or services.
To explore the answer to that
question two years later.
In 2012, the office instituted a
pilot program to audit registrations.
500 registrations were six year,
Section 8 and 71 declarations of use,
or randomly selected and we
required additional proof of use.
Those 500 registrations were comprised
of a statistically significant sample
of all four registration bases,
SO 1A 44E dual bases,
and 66 A.
Because we wanted a sense of whether
any problems with Overclaiming was
tied to the registration basis.
The final results of the pilot
showed that in just over half
of audited registrations,
registration owners were unable to
provide evidentiary support for the use
claims in their original declarations,
with 35% deleting goods and
services and 16% failing to respond
to office actions resulting in
cancellation of the registration.
In terms of results by registration basis,
we saw deletion rates of over 50%.
In this section, 44 E.
66 A and dual basis registrations,
and when deletion rates are considered
with the number of registrations
that were cancelled for failure to
respond to an office action which
is reflected in that last column
across all registration bases,
a substantial number of registrations
were unable to verify the use claims
in their declarations with rates of
45% and higher across the board.
So obviously the final results of
the pilot highlighted the need to
do more for ongoing measures to
encourage registration owners to
file accurate declarations of use.
So our next steps included public outreach.
We held another round table,
this one in December of 2014,
contacted stakeholder groups directly,
and we ask for for written comments
from interested parties.
After considering all the feedback,
we received,
a new rule was proposed and then
then implemented to make the
audit program permanent.
Effective March of 2017,
the trademark rules of practice were
amended to allow the USPTO to require
additional support for use claims
in Section 8 and 71 declarations,
including information declarations
and exhibits,
as may be reasonably necessary for the
proper examination of an affidavit
or declaration and for the office
to assess and promote the accuracy
and integrity of the register.
So, with that,
I'll pause and I'll turn it over to
Jordan to talk about audit procedures.
Thank you Montia.
A good afternoon everyone great to be here.
Happy to talk you all.
When the program was launched,
so the auto program became a permanent
program on November 1st, 2017.
To be eligible for an audit.
The registration must have at
least four more goods or services.
If it's a single class registration.
If it's a multi class registration,
there has to be at least two classes
with two or more goods or services.
Of course, a Section 8 or 71 has to
be filed within a Section 8 or 71
can't have any immediate eligibility.
Besides 8 or 71 we also
look at combined filings.
You are section 815,
your section 8-9 and you're 71 in 15.
If 8 or 71 has a non use claim,
then it's not going to be eligible
for the audit and we use a software
tool to determine eligibility.
We have a software program that
creates a randomized list and that
randomized list is eligible files.
And audits are performed
by we call audit examiners.
It's a mix of examining attorneys
as well as program analysts who have
expertise in the post registration area.
So what is proof of use proof of use is
It will show that your mark is in
use in commerce in essentially a.
It aligns with our specimen practice,
but it also is elevated,
particularly with goods for goods.
Mark is actually on the
physical goods that is perfect use,
but it also can be shown through
tags or labels.
So a photograph of the mark on a tag or
label if it's fixed to the goods for its use.
But if it's not affixed to the goods.
It can work as well if it includes
the generic name of the goods and
also we want to see on that tag or
label other product information.
So that might be a UPC code that would
in a place where it would typically be.
It could be product size,
information,
packaging information,
other matter that goes on a label
or tag that would show in fact
use in commerce proof of use in
a commercial setting and not just
the mark without any other context.
Proof of use for goods can also be at a point
of sale display in terms of a web store,
and so a screenshot of an online
store where the goods are being
sold and when they can be added
to CART or they can be ordered or
purchased and just clear ordering or
purchasing information is acceptable,
but all screenshots have to have the
required URL of the website as well
as the date accessed or printed.
Will also take packaging and for packaging.
It's helpful if the packaging is transparent,
we need to know exactly what is
in that packaging.
This whole point is it's proof of
use for specifically requested goods,
and if we cannot identify what's
in the packaging,
we have to look for other sources to
confirm and that may in fact require
a request for additional information.
This often comes up in the situation
of goods that are located in
a opaque box or container.
We don't know what's inside,
so photographs that are both show
the packaging with the mark on it,
but also what's inside the container
is very helpful.
Proof of use for services is the same
as it is for the specimen practice.
There's no difference in what
can be submitted for services,
so fear in your advertising,
marketing context,
brochures or Flyers that show
use to the mark,
but it has to have a direct
association with the services.
The whole point is that when we ask proof of use,
very specific services markets
to function for those services.
Could be photographs of a mark on a
retail store or restaurant signage.
But similarly to the container issue?
When you have a mark on signage.
We need to know what goes on in
the building that the scientist
is being used for sometimes.
This is very obvious if it's
a restaurant and you know,
there's maybe hamburger artwork
on the windows,
perhaps around the sign that
makes a lot of sense.
But if it's sort of an industrial
commercial building that there's
no obvious indicator there.
What kind of custom manufacture might
be going on inside that building.
Again,
context will always be needed to
support what you're submitting,
is proof of use.
One example of for services is
common is mark on service vehicles,
so it's a best company services and
the mark is clearly on a truck that's
used in reference is some kind of pest,
or let's say insect or bug example on there.
That's a common way of showing
proof of use when it's printed
on the side of the vehicle,
and screenshots,
just like with goods website
screenshots will still require the
URL and the date access to printed.
I will now turn this back to Montia,
who's going to talk about our new deletion
fee and the related deficiency surcharge.
Thank you Jordan.
So Jordan is going to be back to talk about
the audit procedures in just a moment,
but I wanted to highlight three
changes and post registration
examination policy that became
effective on January 2nd of this year,
which caused us to modify some of the
procedures and the audit program some
these new policies though apply across
all post registration examination.
The first change is a new fee of
$250 per class that's incurred.
When goods, services or classes
are deleted during the pendency
of a Section 8 or 71 declaration,
the second change is that in some cases
A 1 time $100 deficiency surcharge must
be paid along with that deletion fee.
Both the deletion fee and the
deficiency surcharge are tide to
the statutory requirement that
declarations under Section 8 and 71
identify the goods and services in
the registration with which the mark.
Is in use in commerce the leading goods
or services from a declaration is an
effort to correct a deficiency or an
inaccuracy in that original listing of
goods or services in the declaration.
Ok? to encourage registration owners
not to wait until after they file
their Section 8 or 71 declaration to
delete goods and services when that
$250 deletion fee would be do we incur?
We introduced a third change,
a new zero fee option for certain
Section 7 request.
This option is only available when the
Section 7 request is submitted before
the Section 8 or 71 declaration is
filed or after it's been accepted and
the Section 7 filing only request the
deletion of goods services or classes.
So for example,
if the Section 7 requests also
includes a change in the owner name,
or there's an amendment to
the registered mark,
the normal fee of $100 for the
Section 7 request would be incurred.
As I mentioned,
the leading goods and services during
the pendency of a Section 8 or 71
declaration is an indication that the
listing of goods and services in the
declaration is deficient because it
didn't satisfy that statue to a requirement.
Again,
to list goods and services in use
in commerce.
Other deficiencies in a declaration include
submitting an insufficient filing fee,
filing an unacceptable specimen,
and identifying the wrong party as
a current owner of the registration.
In line with how other deficiencies
are treated,
a deficiency in the listing of
goods and services in a Section 8
or 71 declaration can be corrected,
but a one time $100 deficiency
surcharge may be required.
This is determined by the date the
original declaration was filed
and the date of the response.
Correcting the deficiency in the declaration.
So for example,
if you were to file your Section 8
declaration right after the 5th year
following the date of registration,
which would be period one.
And in response to an audit office action,
you delete goods and services and that
response is filed before the sixth year,
which would also be period one.
You would owe the $250 deletion fee,
but not the deficiency surcharge.
In contrast, if you didn't file that response
to leading goods and services until after the
sixth year when you would be in period two,
you would owe both the $250 deletion
fee and the $100 deficiency surcharge.
So to sum up, a fee of $250 per class is
required each time and response is submitted.
Deleting goods services or classes during the
pendency of a Section 8 or 71 declaration,
but the $100 deficiency surcharge,
which is only paid once regardless of the
number of deficiencies in a declaration.
Is only required when you're responding by
correcting a deficiency in a filing period.
That's different from the filing period of
your original Section 8 or 71 Declaration,
and now back to Jordan for more
on audit procedures.
Thank you, Montia.
Alright, let's get into the inner
workings of a proof of use audit
by first addressing your initial
office action that you're going
to receive that initial office
action is going to request proof
of use for two goods or services.
If it's a single class registration an
if it's a multi class registration,
it maybe two goods or services
per multi class could be one in a
multi class where there's only two
goods or services and there's no
proof of use for one of those items.
Or it may even be proof of use for a
class that has just a single item,
but these specimens submitted
is unacceptable,
and that might be the case
unacceptable as proof of use,
and so that might be the case of a
label tag for clothing items that just
has the mark but nothing else on it,
and it's not attached or anything.
So those.
So that's that's the immediate proof of
use portion of your initial office action.
But there's more, but will also
address any underlying issues in
this Section 8 or 71 declaration.
And how does the audit?
How does that initial office action click?
What kinds of goods or services are
going to be request for proof of use?
Well, first, it's the audit
examiners discretion on what
to choose for proof of use,
and that is after review of the 8
or 71 in terms of the specimens
to see what the specimens cover.
For proof of use and to ensure
that we don't ask for proof of
use for things already submitted.
The audit examiner is going to
look mostly for despret goods
or services if possible,
and but what I mean by that
is typical example.
You have a registration that has
us in class nine that has numerous
items of downloadable software,
but the registration also has sunglasses
and fire extinguishing apparatus.
These specimens that were submitted
show clearly use of the mark
on variety of software goods,
but there's no reference at all.
In the in the record in in the
8 or 71 to the sunglasses or
fire extinguishing apparatus.
Pretty good chance that when the
audit examiners reviewing that file,
they're going to seize on those,
all those disparate goods that
have not been already been.
There's no proof of use in the record.
The audit exam is going to do their
best to make sure they select clearly
from the registration what it is
exactly that they're asking for.
Action would be difficult given
sometimes registration ID construction,
but we tried to make it very clear
what it is that we want to see
in response.
Alright, so your initial office action,
as I noted will will reference any
inquiries or deficiencies with the
maintenance filing and then it will
include a whole series of advisories.
The first advisory is that if you cannot
provide proof of use for what is requested,
you must delete the audited
goods or services.
If it's not available.
Not only that,
you should also delete any goods
or services that are also in
the registration that does not
have proof of use available.
Even if we didn't ask for them.
So this is the time where you're going to.
Really go over that portfolio again
of what is in this registration
and determine at that point if
you can't show proof of use for it,
it should be removed from the registration.
Other advisory is going to be
that pay the deletion fee as
Montia has talked to us already.
Now if you have to delete
items from that registration,
you're going to have to pay
that $250 per class.
As well as possibly the deficiency
surcharge so the advisor advisory
in the First Office action about
potentially needing to pay the
deficiency surcharge based on the
timelines that we've discussed.
The initial office action also warns
that if you don't satisfy the audit
in your response is a possibility that
you will get a second office action,
which will escalate the audit to a request
for proof of use for everything remaining
without proof of use in the audited class.
Finally, you are given response
guidelines that if you do not respond,
the entire registration is cancelled.
There is no partial aspect to an audit.
In audit review, essentially,
if you do not respond,
even if several classes were not subject
to audit and and the initial office
action will let you know what classes
are being requested in which ones.
If it's not mentioned,
likely it's not under audit,
but if you don't respond,
the whole thing gets canceled,
so keep that in mind.
Going back to the deadlines,
your response deadline is going to be
six months to respond or to the end of
the relevant statutory filing period,
whatever is longer.
So if you file early.
In your renewal pair, let's say in
the very beginning of the fifth year,
and you're getting office action
fairly quick,
you might have a response period
quite a bit longer than six months.
Maybe 10-11 months won't be more than a year,
but you have quite a long horizon to respond.
So now that you've gotten your office action.
What?
What is your strategy to respond?
But we encourage a strategy to complete
an entire audit in a single response.
This is perhaps to keep costs down
or just a matter of efficiency,
but you can resolve everything you need,
hopefully in an audit in one
single response back.
If you have proof of use for what
we've asked for, that's great.
We will eagerly await that proof of
use in a response and review it,
but help us out by labeling,
describing exactly what it is
you're submitting.
It's not always obvious what
we're looking at sometimes.
Some goods are clearly very obvious,
but more often than not,
especially commercial or industrial items,
let us know clearly in the form
or on your attachments somewhere.
This image described is this goods,
phrases,
or sentences like photo of mark on
goods is not super helpful to us when,
when looking at non ordinary or
just not obvious kind of items.
I give you examples, I watch,
I'll talk about this in the moment as well.
So in your response,
as a matter of strategy,
if you have determined other items
in your registration are not avail
for proof of you should delete
those items as well as pay the fee.
And again also pay that deficiency
surcharge if it is due.
If deletions are being made or
there's any other item deficiency
in the first Office action,
perhaps responding to a specimen refusal.
Uh.
If you do have to provide additional
proof of use for the remaining
items in a registration,
make sure you label those as well.
Lots of situations where you
may have numerous strings of
goods or services,
and the more you provide to us
on what exactly we're looking at,
and so we can match up what's
in the registration to us
In your response, the better.
Provide charts, lists, tables,
exhibits that describe proof of use in,
in large documents.
These files can become voluminous if you
have a long list of goods or services.
It's very helpful if we have
some kind of index to rely on.
Exhibit A goes to shirts and
exhibit B goes to pants.
I mean I get those are obvious goods,
but obviously you can imagine in your
head if you're dealing with paper
shredding machines or lawn equipment in
a in a commercial setting or whatnot.
The more the more you provide to us,
the more it's going to help
review your response.
Also, things like instruction
manuals that might have a mark
in it using acceptable manner,
but that manual might be 200 pages long.
Let us know where in that manual the mark
is there starting to fish around for it.
You run the risk that we might just miss it,
which of course we don't want to do,
but you know it can happen.
So let us know on page 83 of
whatever manual the mark is there,
and it describes whatever
it's supposed to describe.
In the manual,
don't resubmit evidence already
in PTO records.
USPTO records from past filings
just creates a possible flag of
Is this proof of current use?
I'm sure you can think of examples
where the picture of goods from
prior filing might be the identical
picture of the good that exist now,
but the point is that because that same
image was submitted years ago, well,
is it really showing use right now?
It may, but it also may not,
and that's when the risk of prior
filings with this date stamps.
On those images,
you don't want to submit a date stamped
from prior years ago when you're
saying its current use right now.
What if we can't figure out
what is being submitted?
You may end up getting another office
action with a request for information
and that request for information might
ask for additional photographs or
documentation supporting proof of use.
This comes up often with the items
where photographs are zoomed in and
they show the mark physically on goods,
but there's no broader view
of what the final,
what the goods are,
and it could be a variety of items,
so we might so we encourage multiple images.
Sometimes if,
let's say an example of a label sewn in on.
On a waistband of clothing,
well that waist band can show pants.
It could show shorts that could show skirts,
capris, a whole variety.
So submit maybe the close-up image
and a zoomed out image.
If you run the risk of getting RFI,
it request for information.
It delays the process,
but you also run the risk of
getting a second office action if
we just don't think proof of use is
there in that of course escalates
the audit to another level.
So once your responses submitted,
if proof of uses provided,
we will issue the acceptance.
If proof of use is not provided
for what we asked for,
but deletions have been made and
perfect use exists for everything else,
we will issue the acceptance as well,
as long as all fees are paid.
However, if the response
does not resolve all issues,
a second office action will issue
and your second Office action is
going to ask for proof of use for
all the remaining goods or services
in the audited classes without
without acceptable proof of use,
and it will include listing
of any outstanding fees.
Your second office action
has multiple component parts.
The first part of a second office action
will give your status of what any situation,
any issues that have been resolved.
And then what is outstanding and it
will indicate if you have made any
deletion requests in your first response,
it will note that deletions for
the requested goods or services
have been entered.
The second Office action will have a
list of all the goods and services that
do have proof of use in the audited classes,
and then it will also include a list of
all the goods or services that do not
have proof of use in the auditing classes,
in which miss,
which must be shown in a response,
if any.
Proof of use submitted in the
first response was rejected.
That second office action will
include an explanation of why
the proof of use was unacceptable,
and then then the second office
actual also go through all the issues
and indicate what additional fees
are outstanding and what maybe do.
Response response is submitted
to the SEC Office action.
We do the same analysis we do after
First Office action or all of the
underlying issues in the maintenance
filing resolved as proof of use been
shown for all of the goods or services
without proof of use and if so,
and all fees are paid,
we will issue the notice of acceptance.
And if not, well,
then we'll go to the next step,
which is 1/3 office action.
But that second action,
that second office action when it
gets issued the response is similar
to the first response deadlines.
You will have six months to
respond to a second office action
or to the end of the statutory
filing period if that is longer.
Now before we talk about
the third office action,
let's go pivot right back
to the deletion fees.
It kind of keeps popping up here.
Your deletion fees are successive,
so each time that a filing is made,
once an audit has started
and deletions are made,
the fee must be paid again
and the fee is paid.
If it's just a couple of goods or services,
or an entire class.
An example of how the fees are successive.
So in a response to the
initial office action,
ABC company deletes goods from 3 classes,
so that would be fees of $750 and
deletions in response to the,
but the audit was not satisfied,
so a second office action goes out and
in response to the Second Office action,
ABC company deletes goods
from two of the same classes.
At that point they've now incurred the
equivalent of five times of classification,
so 1200 and $50.
Patient feels you can see
how these fees escalate.
If a strategy of not resolving everything
in the first action is not taken.
So let's go back to auto procedure
with the office actions.
We're now at the point we got to 1/3
office action in your third office action,
and this is where practice has changed a
lot since the fear rule came into effect,
we used to have the ability of a partial
third office action which would set out
items which don't have proof of use.
And if you did not respond you didn't
do anything, then the office would
delete those goods and services,
but that does not exist anymore.
The new procedures after the rule.
Makes the third office action into a
notice that will list what goods and
services do not have proof of use.
It will provide arguments for any
rejected proof of use submitted with the
Second Office action that was not accepted,
and then it will give you
a revised response options.
So this is the new procedure.
Your revised response options are
two or three ways of handling to
based on where you are in time.
The first is that you can file
a petition to the director and
that's if you disagree with the.
Audit examiners findings.
Or,
if you wish to have new proof of
use or additional proof of use,
submitted for review so you will have a
six months to respond and you can file a
petition to the director for those issues.
In the alternative,
you can file a post registration
response to office action through the T
system and request the deletion of any
goods or services without proof of use.
That is the only kind of response
that we will accept.
Of a post registration response form.
At this stage,
any substantive argument or substantive
response or additional evidence
provided that way will not be reviewed.
We will.
We will send you an office action
that acknowledges that response,
but that it's not being reviewed
and that the original timelines in
a third office action are maintained.
If there is time left, however,
before the end of the grace period,
you can file a new Section 8 or 71,
but you will pay all the new fees for that,
and any deletions made to the registration
up to that point will remain.
Now that you don't escape the audit,
so you can still do that,
you still have the benefit of filing
before the end of the grace period,
but it does come with its
own set of challenges.
As I noted,
response deadlines for 3rd office
actions are different than the 1st
and 2nd Office Action No later
than six months from the issue
date of the office action,
both for filing a petition or for
requesting that the goods or services
are deleted with payment of all fees
in that response to office action.
If no response comes in at all,
the entire registration will be cancelled.
Alright, so taking a little
break from procedure,
let's talk some results.
This chart here shows results of data
programs through April 30th, 2021.
And we've issued just under 15,000
first actions by the end of April,
and 11,820 responses come in in
that disparity between issued
in response is that has to be.
That's due partially to cancellations,
so up until that point we had roughly
1500 cancellations and the remaining
number is just pending files where
office actions have gone out,
but responses haven't come in
yet of responses received it.
6087 registrations have deleted goods,
services or classes and that's 51%.
51% so more than half of all
registrations who have submitted
a response have deleted at least
something in that response.
When you factor in the cancellation
rate that goes to 57%.
Looking at the last two lines,
percent represented by US attorney that
is at 82% have attorneys on these files,
and that is upset from 79%
when this program started.
It could be a variety of factors,
but one of them likely is that ever since
the US Council rule came into effect,
requiring US council before,
and domiciled entities, that is,
there's been an uptick of number of
audits for those Council representation.
Some additional statistics.
Of the 1500 or so that it's
actually from June 1st.
This is an updated hot off the press that
we had 15174 cancellations as of June 1st,
but of those 13160 were no response
at all to the initial office action.
So most of our cancellations are by
far most are from files where they
got the first action audit letter
and just no response was submitted.
We issue about 33% of all audits.
Go to a second office action,
meaning that they didn't satisfy the
audit in response to a First off in
their first office action response.
An about only 5% make
it to 1/3 office action.
And looking at the results
to date by filing basis.
You can see under Section 1A it's
slightly it's 47% have had to
make deletions in their responses,
but then you look at the
three foreign based 44 E,
66 A and one 1844 and you can see
it's significantly higher and this
has been consistent throughout
the life of the audit program.
We have been in that mid 60% range
for all three of those bases,
and so we will look to see how
the new feral alters these
statistics as that keeps.
Getting a diffused as
our program goes forward,
and if you were just curious in a
breakdown of audit percentage by basis,
78% of all audits are one a
basis and the next highest is
15% and that's the 66 a basis.
The other 44 in one one and 44.
You are a bit more marginal statistically.
This is the slide shows our
monthly deletion percentage.
This is an interesting insight.
It looks at the responses
reviewed in a month long period
for on a registration basis.
How many of those registrations
with the response getting reviewed
had a deletion and this kind of
fluctuates a bit up and down per month.
There's an asterisk for April 2021
because we were on hold for several
months while we implemented the rule,
but it's never since the since
this light goes back two years.
But since the program's inception.
We've never had less than 40% the month,
and we've never been higher than 60%.
And so this is also something that
we're going to chart and look to
see going forward with the feral
and whether we can start seeing
a trend of declining monthly
deletion percentage here.
We hope the book that will
see that with the new feral.
Responding to an audit,
this is a tease elektroniksystem
centric couple of slides.
Here we want to highlight a
few changes that were made
to the T system late in 2020.
That gave it gave specific portions
of the forms to respond to an audit.
Not only that,
because there are so many deletions
improvements were made to the
modification of an identification
of goods and services field to work
together with the audit portions.
And so looking at the slide,
little might be a little hard to read,
so I apologize.
And you know,
when you get the slide deck,
it'll be a little more clear,
but we hope you can do the best here
at this number 2 and the wizard asked
you didn't do any of the following
in the middle bullet point there
is to modify the unification of
goods or services you're going to
click yes to number 2 if you have
to enter any kind of deletions in
your response and #3 immediately below is,
you need to respond to approve,
use, audit,
so you want to make sure
two and three or yes,
if you're making any deletions.
You're not making any deletions and
just submitting proof of use then
only three has to be yes and less.
Another issue has to get
addressed from the other options.
And what this looks like is when you go
to make your goods and services changes,
there's a track changes feature
and in this grey box at the very
bottom it says modify identification
and so your ID will populate in
their annual highlight with your
mouse or highlighting device.
Any of the text that you wish to delete,
and if you hit the delete button it
will then strikethrough that wording,
and so once you've ended all of that
and you hit continue in the form.
It'll reflect those changes elsewhere
in the TS form and my elsewhere,
I mean.
Here in the proof of use portion
this is only a portion of the proof
of use section of the TS form.
But if you look at the current
listing of good and services for
class in this case is the Class 25.
It will reflect the modified
ID from the deletions,
and this is very helpful because if
you are deleting all sorts of items
and you have to provide proof of use,
you really only want to look at
what it is that you're providing
proof of use when you're adding
your images to the form here,
so your modified ID will show up.
In this table and select the
first radio button proof of use
provided below for this class.
This will then refresh and it will.
It will show a series of boxes where you
can attach your proof of use and describe it.
I wanted to highlight two
portions of the forms.
First it says auto good.
Just service with the red
assets are acquired box,
so that's where you would type in.
Proof of you submitted for and you
would indicate that the name of
the goods or services that we asked
for and then immediately below
it says describe the attached.
Evidence for this item.
This goes back to what I referenced earlier,
where a phrase like image of mark
on goods is not super helpful,
so you want to take this time
to use this require box.
Indicate you know Mark on sweatshirt
goods or you want to be as precise as
possible and if it's more complicated,
kind of proves being offered.
Take the time to use that box to describe
exactly what it is you're submitting.
The more context, the better.
At the very bottom of this image is a boxes.
Click here to attach a proof of
use that just does the upload or
that you have a lot of flexibility
in these forms to put all the data
that we need in various places.
So don't be shy,
get all of it into the form and you can
give us as much as we can to look at.
Lastly,
the this slide shows the fees
as the topic does,
or the last question the
wizard is going to be.
Do you have to submit any fees and
as long as they submit yes to that,
it will trigger the menu and this
slide shows the very bottom.
Here in this red box the last
item is the deletion fee an on the
right you'll see a multiplier,
so you can use that multiplier to
get to the right amount that you
have to submit for your fees as we
talked about with six successive fees.
You might need to do a little bit
of math to calculate it,
but you can do that all here and
then immediately above.
That is the deficiency fee,
so they are paired together and
that's where you can handle it.
Selecting all the right fees and
take care of the payment at
the appropriate payment screen.
And with that I will turn this
back over to Montia.
Yeah,
just going to bring us home in
how to prepare for an audit.
Thank you Jordan.
OK,
waiting on the slides alright.
Alrighty so as Jordan mentioned
a little earlier,
we've audited almost 15,000 registrations
in the permanent program A since 2017,
and we plan to audit at least 5000
registrations a year going forward.
So there's a very good chance
that you'll receive an audit
office action at some point from
the stats that were just shared,
it's really clear that there's
still work to be done to prop the
changes in filing behavior that
we'd like to see to improve the
register integrity issues that we've
seen since we started the program.
Way back in 2012 as a pilot,
we do hope as your dimension
that the recent changes like the
deletion fee as well as the upcoming
policy changes will help to speed
along that improvement.
O will end with a few
reminders about the legal
obligations of declaration for
decorations and all submissions
to the office and provide some
tips for preparing for an audit.
So First off another reminder.
Hear that when about the importance
of accurate listing goods and services
that are in use in commerce in your
Section 8 and 71 declaration when
you file them with our office,
the person signing is swearing that
the mark is in use with the goods and
services listed in the declaration,
and that's a specimen submitted.
Show current use in commerce
with those goods and services.
And whoever signs or files that
declaration is certifying that,
to the best of their knowledge,
information and belief formed
after after an inquiry,
reasonable under the circumstances,
the contentions have evidentiary support.
Two things to highlight their the
requirements for reasonable inquiry
and for evidentiary support will
return to both of them in a moment.
Note that criminal penalties are
available for knowingly and willfully
making any false statements.
In fact,
all submissions with to our office
must comply with the requirement
for a reasonable inquiry,
an evidentiary support where
appropriate submissions must not be
presented for any improper purpose,
and they must comply with existing laws.
Sanctions are available for non compliance.
Returning to the requirement
for a reasonable inquiry,
what would be considered reasonable
is really highly fact specific.
So for example,
in cases where an attorney submits a
declaration that signed by a client,
the question of reasonableness
of that inquiry may depend on
the client sophistication and
experience with trademark law.
Attorney should ensure though,
that their clients understand the
requirement for use in commerce and
that their clients have taken the
appropriate steps to confirm use an
eternally an attorney general may
rely on information that's provided
by a properly educated client
unless the attorney has reason to
believe that the information is
inaccurate or incomplete.
Attorney should review all relevant
information and discuss with the client
any documents or other information that
appears on its face to be questionable.
Returning to the requirement
for evidentiary support,
consider creating a checklist by
listing each good and service in the
ID on a separate line by cutting and
pasting that information from TSDR.
And when use of a mark is confirmed,
take photographs of the goods print
supporting web pages and URLs with
the date of printing and keep any
other supporting documentation
for your records so that you do
have that evidentiary support.
If use of commerce can't be confirmed
as soon as you can and before you file
that Section 8 or 71 declaration,
take advantage of that new zero fee
option for filing a section several
requests and delete those goods,
services and classes from your registration,
proactively ensuring that IDs and
registrations accurately accurately
reflect goods and services using
commerce and even before you approach
your statutory filing deadlines
will be even more important.
Once our reexamination expungement
mechanisms are available.
So if you know that use of a mark
with any goods and services has been
permanently discontinued or never started,
delete them.
Or you should consider deleting
them from your
registration as soon as possible.
You do have the option still to delete
the goods and services within your
Section 8 or 71 declaration itself
without paying the fee, but again,
we really want to encourage you to
use that free section seven option and
delete them as soon as you are aware
that those items are not in use and
that there's no excusable nonuse claim.
And finally, we like to encourage you
to take a look at our updated audit web
page for even more information about
audit procedures we recently added,
for example proof of use examples to
the page to give you a sense of what
would be acceptable as an approved use.
We hope that the information provided
today and available on our website
will help you to complete that
audit with one response,
so I think that's the end of our
presentation and we're going to take
some questions and I believe that.
Jason Lot is going to be returning.
Yes, I am returning.
Thank you very much.
Montia thank you very much Jordan.
Alright folks, we're going to
now shift into the Q&A portion.
We know that a lot of you have
been sending in some questions.
Thank you very much for sending those
in some great questions coming in.
If you have a question,
haven't asked it yet,
please feel free to send to
tm_webinar@uspto.gov.
Please note we're going to do our
best to answer as many of them as we
possibly can and inside remaining,
but also be aware and I'm not
necessarily seeing these yet.
But please try and avoid very
specific questions because we
cannot give legal advice,
so we can't necessarily give an
answer that is going to say yes.
This is totally fine.
So you know you know the deal,
so feel free to send those in.
I haven't seen any yet,
but if you have any TMI questions,
please hold off on sending those in,
because really,
we're just focusing on post
registration audit stuff today.
We do have a round table
coming up on June 14th.
I'm going to show you the web page for
that before we close out today, but.
Just want to keep that in mind.
Hold on to those TMI questions 'cause we
are going to answer him, just not today.
So our first question is going
to be to Jordan Jordan.
Go right ahead alright?
Well, each read the question and then answer.
So the first question is,
are all registrations meeting the
specific criteria of the Section 8
or 71 selected for audit and if not,
what percentage of qualifying
registrations are audited?
Good question and no 'cause that would be.
Former audits that we've been
able to conduct per year.
So our goal has been 5000 audits I
can let in the last several years.
Our total post registration number for
Section 8 and 71 is somewhere around 180,000,
I believe.
Within range of couple higher or lower,
so we're as much smaller percentage and
then the software gives us a list of
usually a couple thousand or so eligible
files per per biweekly go bye bye bye week.
But then we have to go through them
and many files are not eligible
because thankfully we've gotten too
many good specimens once they come in,
so you may as these as the auto program
has gone on for several years now.
People are aware of it and they have
improved the quality an up their
section 870 ones and the quantity
of how many specimens we get.
And of course, if there's nothing
for us to ask for reviews for,
it's not eligible for audit.
So I don't have a percentage
number for you there,
but it's definitely not anywhere
close to everything that's eligible,
and I don't think we'll be able to
put a number on the qualifying part
because we have to go through and
make sure we don't select things
where there's nothing to ask for,
but the numbers.
Keep in mind there's about 180,000
Section 8 and 71 the year filing
at our goals do 5000 audits.
OK next. OK, so my question is,
is there any way to avoid both the
$250 deletion fee and the 100 fifteen
$100 surcharge for deleting goods
and services from a registration?
And the answer is yes,
and the answer is the rest of the
question which is for example,
can we delete goods services from
a registration before filing the
Section 8 or 71 declaration or or
concurrently with the maintenance
filing and not incur any fees?
So yes, that's absolutely the
way you should do it.
Again, we encourage you to file.
Your any deletions that you know.
If you know that you stopped
using a mark the goods with any
particular or services with the mark,
delete the goods and services
as quickly as you can as early
in the process as you can,
and then you will not incur that
deletion fee or the deficiency
surcharge for deleting at that time.
Thank you Montia. Yeah next question
is can a restaurant be sent in office
action based on Section 8 deficiencies
and also be sent a separate office
action based on an audit for the same
Section 8 that's not supposed to happen,
it shouldn't? They should be all.
Be everything should be addressed together.
The I like to say that the audit
kind of layers on and over regular
post registration review.
The audit examiner is always going
to review the Section 8 or 71.
Just like a post registration specialist
would review and then as long as it's an
eligible file they will add the audit.
On top of that.
So there shouldn't be any separate
office actions, there's no.
Office action for a Section 8 coming out
of post registration that is deficiency
that gets handed off to the audits.
It there's no connection
between the groups that way, so.
Probably it answers that question.
Thank you Jordan.
OK, next one do deletion fees also apply to
goods that were actually in use in the past,
such as CDs,
but are no longer used by the registrant,
IE there was no misrepresentation
but the goods services were
phased out since registration.
So the answer is yes,
we what you should be doing is
before you file your Section 8 or
71 declaration you should be doing
it in Victor like we described an
looking for evidence or proof that
the mark is in use with for example.
The CD's before you file.
You should delete that those CD's from
that Section 8 if you can't confirm you.
So if you don't delete them an you
file that Section 8 and then we
select the registration for audit
and we ask for the CDs,
then yes,
the the deletion feed would apply
because you would need to delete
those items in order to move
forward and have your Section 8
declaration accepted eventually.
Alright, can one piece of proof of
use show use for more than one item in
the identification of goods services?
For example, an ID could include
chocolate confectionery containing
pray leans and chocolate confectionery
having a pray lean favorite flavor.
So yes, it certainly can.
This happens a lot in particular
classes that with the ID
construction there's often overlap.
One example might be jewelry and rings
are separate items listed in ID.
And if we ask for rings,
that would be also able to
cover jewelry as well.
We don't.
You do not need redundant submissions of
images to cover items that cover both,
but doesn't hurt if you label
everything right.
As to the specificity of the chocolate
confectionery question raised,
what I'd like to say is that we
always look at the common commercial
understanding of what a term is.
It's in an ID, so we look to see how it is.
If you,
if you did a search for that
term and we look to see how it's
sold in the marketplace,
how is it referred to?
Because we also have a lot of redundant
redundancy in IDs where certain items
you a singular item made be described
in four or five different ways.
We will take a single piece of proof of use.
If it does cover all five of those ways,
as long as it's not some kind of specific
or technical nuance where it won't
really be appropriate for some reason,
hot chocolate is always
one of those items that.
The beverage,
but it's got four or five different
listings for the same item.
It kind of comes up a lot and we really
try to go out of our way in an audit
to not ask for the same thing twice,
because that sort of defeats
the doesn't really.
The purpose of asking proof of use,
so we try to steer away from
asking from two different ways
of saying that the same item.
Q Jordan so the next one is if you are
required to pay a deficiency feet,
will you be informed ahead of time or
must you anticipate that when submitting
so whether or not the deficiency fee
is owed in some cases will depend on,
for instance, the the issue and the timing
when your office action first goes out.
So for instance, if if we're by the
time the office action goes out,
if you file in period one and you file
your original Section 8 in period one and
that office action is going out in period 2.
Then we will tell you that, for instance,
if you have a specimen issue,
you're going to need to pay
that that deficiency surcharge.
But in other cases, for example,
if you file really early on in
period one where there's still
time left when you could in theory
respond within that same period,
one we don't know whether or not you will,
oh a deficiency surcharge.
It will depend on the time period
when you actually respond,
but that will be explained it it will say,
hey, you know you need to pay it efficiency
surcharge if you file your response.
After this date, but in other cases,
if we're already in period 2,
for example,
when we issue that office action,
then yes, will say oh by the way,
you owe a deficiency surcharge.
Your specimen is bad and you need
to respond with an acceptable
specimen and efficiency surcharge.
Alright, we have a fact pattern here.
This is actually a very
common fact pattern question,
so I'm really glad this is asked and I'll
note also that the auto program wasn't
always entirely 100% consistent on how
we handled this in the very early days,
so I'm glad this question was asked.
So two classes are audited and a response
from its proof of use for items in one class.
The audit the proof is accepted,
and in the other class the proof of use.
Is not accepted.
Well, the second Office action require
proof of use for all items remaining in
the entire registration or just remaining
in the class where the audit with the
proof of users not accepted and so the
audits are on a class by class basis.
So in this case the second Office
action will only escalate to ask for
proof of use in the audited class
where the audit was not satisfied,
so only one class here will get request
a requirement to provide proof of use.
For everything that's not provided
proof of use yet in that class.
The first class,
it will note that the audit has
been resolved for class one and
that this audit SEC office Action
letter is only applicable to Class 2.
You so the next question is can
you delete a service or good after
you file a Section 8 that was
accepted and still avoid a fee?
In other words, you discover a service
that is no longer offered but was
soon after a Section 8 was accepted.
The answer is yes,
you would not have to pay that deletion
fee if the Section 8 has been accepted.
When you then file your Section 7
two and you wouldn't have to pay the
Section 7 filing fee at that point
either once that section is accepted.
Yes, you can go ahead and delete via
Section 7 without painted deletion feeds.
Once a company has been audited and
has had to delete goods or services,
will that make them more vulnerable to
being audited continuously going forward?
Present practice is that we
do not have repeat audits.
The program is still fairly new,
so we've really just sort of barely
dipped our toes into this coming up,
but as of now,
after registration has been audited once.
We are not treating it as
eligible for an audit.
When it falls,
it's next maintenance violent.
OK, the next one.
Do I always need to pay the deficiency
surcharge when paying the deletion feed?
So again, it's going to vary.
It's going to depend on when you
respond and when you filed your
original Section 8 or 71 declaration
if you if you're deleting and you're
responding with the deletion fee
within the same period that your
Section 8 or 71 declaration was filed,
then you wouldn't OS that
that deficiency surcharge.
But if by the time you respond,
for instance that six year period
is ended and you're now in this.
In the six month Grace period,
an you're deleting you would need
both the deletion fee as well
as the deficiency surcharge.
If a registrant can provide the
requested proof of use in response
to the Third Office action,
is a petition required
under the revised rules?
After the change, yes,
a petition is required to
submit additional proof of use.
Evidence that is not
previously been submitted.
And that includes paying
of the petition fee.
Waiting on her next question.
OK, who is conducting the review for
the audit an are they are let's see.
Are they trained to fully understand
the specimen? Produce rule?
Yes, first of all I'll answer
the second question first of yes,
they are absolutely trained
to understand specimen.
The proof of use.
The staff includes examining attorneys
on work Project L as well as program
analyst who are really experienced.
Have an expert expert level
knowledge base when it comes to
post registration examination.
As well as specimens and Jordan
and I actually both do the training
for the audit team examiners,
so absolutely they are well trained on
both specimens as well as the proof of use.
Question is, do you have data
on how successful a response
to an audit is based on whether
someone has representation or not?
OK, there's a couple of ambiguities here.
In what successful means. Uh.
In terms of does that mean
getting to a notice of acceptance,
no deletions or not two years ago we
did a fairly deep dive into a sample
of more than 2000 registrations.
We looked at the breakdown between
audit files with representation or pro.
Say we actually found that there
were more deletions made in the
representation registration.
So the pro say.
Respondents had made less deletions
and we're we're able to satisfy their
audits without making any deletions.
At a slightly higher percentage rate
than those with Council do not have
the exact number in my head right now,
'cause it's been a couple of years.
I will know we are actually on
this summer going to be doing
additional data analysis on a fairly
large sample of registrations,
but I do believe it was pretty
close to the split between the two.
It's hard to say to satisfy, you know,
successfully completing an audit can
have lots of different meanings,
so I don't want to get into that.
I mean, you can get,
you know, stick sentence,
delete it one or two items,
and you know that might be successful.
If you have several 100 items,
it's all based on context,
but but but it's not intuitive to
think that just because someone is
pro say that automatically they're
going to do worse than an audit,
and someone that has council,
and I think our data is back set up
quite a bit. Hey thank you Jordan.
Next one is does the USPTO plan
on increasing the number of audits
conducted in the coming years.
I will say currently for the for the
indefinite future I would say Jordan.
I've not heard of any plans to increase.
We are going to be for now.
Continuing with that 5000 case,
you know a year goal, you know.
Certainly we would love to if you know
staffing and an you know permitted,
that would certainly be something
I think we would want to consider.
But for now.
We are just doing the 5000 per
year as our goal for the program.
And of course if examiners get really
ambitious and want to help us to do more,
you know it's certainly you know
we love and appreciate the work
that our examiners do,
but the official goal for
the office is 5000 per year.
Just tack on to that.
When the rule was written,
I believe is that was sort of a finger
at 10% of post registration filings.
If I recall it right.
Well, that would be 18,000 or so roughly,
so we're not close to that.
There is room for flexibility,
but but yeah, it actually did.
Yeah, and I actually,
I don't think they will actually
caps it at anything.
It says to start with 10% so it's dream big.
But but yeah, it's 5000. So question is,
can you speak a little more as to the
software and process for identifying
registrations that are chosen for audit?
Are they truly random or does the
software select a certain number of
registrations under East under each basis?
It is as random as one believes
in randomness as a matter of
software programming there is no.
Program bias per on Abeona
to target certain bases.
We don't do that.
The software I can let you know
updates itself every bye week.
We get a table of all the eligible
files run in the prior bye week and
that software runs on a basis of
parsing ID's through semi colons and
commas and then when an audit examiner
logs into the software they get a
numerical list and they are instructed
to go through that List 1 by 1.
An and it's just presented in
a randomized order every time
you refresh on that software,
re jumbles the table and.
You know that that's worked
for us for a few years now.
There's there's no other
anything else to the software,
and in terms of basis or targeting,
really long IDs or nothing like that,
it's simply a minimum criteria.
Looking at a minimum number
of commas and semi colons.
So we just have a basis to start
through an we just go one by
one down and look to see it.
And if there's it's gotten on a
used claim against bounced out,
and if there's proof of use for enough
items to not take anything to note,
it just gets bounced out as well.
Thank you, Jordan.
Another two part question.
If during an audit you find that a
product such as software on CD's
and Class 9 has evolved into non
downloadable software in Class 42,
can that be revised instead
of delete it during an audit?
Is the evolving technology
amendment still available?
So I'll answer the second part of that first,
which is yes.
Technology evolution petitions
are available to amend ID's.
They are again there's a
petition that must be filed.
In order to avail yourself of that
request to amend as far as Jordan,
I'm going to put you on this.
Are you aware of us ever considering
in in the midst of an audit?
Are requests to.
Basically,
I guess it would be we need to suspend the
audit in order to consider the petition,
seeking to amend the idea,
I don't.
I'm not aware of us ever doing that, but.
No, I don't think we've had any kind of.
Suspension yeah request but again,
if you're proactively reviewing
your ID before you file your
Section 8 or 71 declaration,
hopefully you're realizing that
your class your CD's are now
a class 42 item and so again,
that's another really good and
important reason to do your due
diligence early to see what's
in use and what's
not in use, and take care of that tech.
Evil evil petition in advance of
filing your Section 8 or 71 declaration
we we we have had several tech.
Evil petitions for audited files,
but nothing since the funerals come out,
so we haven't seen how that
works together, if at all yet.
Couple of questions here.
One is our foreign registrants selected for
an audit more than domestic registrants.
There's, as we've noted, there's no
specific targeting by filing basis,
so the only statistic I have on that is
just the breakdown between one a basis
which could be by far and domiciliaries,
or by any of the three other bases,
and after the one a basis it's
Madrid to the second the 66 days.
Are the most common to show up in an audit,
but there's there's no attention being
paid to anything about related to the
country that an owner is domiciled in.
It's not at all related to the software
programming to create a randomized list.
On the next one is what is the
relevant period during which there
must have been used in commerce.
If the mark was used in commerce
three months prior to the opening
date on which the Section 8 can be
filed in the Section 8 is filed,
that first day is acceptable to rely on
use from the three months earlier than
the 5th year anniversary anniversary,
so use has to be within that
statutory filing period,
which would be the 5th year to you know so.
So you should need to be within that
relevant period, because, again,
you're going to have to provide a specimen.
That's going to support use during
the relevant statutory filing period,
so it would be that fifth year,
and then you know,
ending with going all the way
through to the grace period for use.
Can you please confirm how the number
of goods or services being deleted
is determined for cost fee purposes?
For example, sometimes different goods in the
class are separated by commas or semi colons,
sunglasses and software or is clothing,
namely, will all the goods that follow,
namely be counted as one deletions are.
It's a, it's a class based fee.
So no matter how many deletions you make in
a single class in a single filing response.
You're just going to pay the
2:50 for the entire class,
so if you have 50 items and you whittle
it down to two and you delete 48,
you're still paying the 250 for that class.
So so and the deficiency fee is not
at all related to to specific goods
or services or classes. It's a.
It's an overall registration fee.
So you want to go ahead and take that?
Take that one.
I'm going to wait on another one for me.
Ha. The very last time.
Sorry I'm scrolling here.
I'm sorry monthly, that's OK.
Our monthly or quarterly statistics
on the number of audits and the number
of office actions etc available on
the PTO website or someplace else.
Unfortunately, our TM dashboard
has yet to include audit data.
Our stats are typically made
available in presentations.
They have been in the past given by
our executives at various conferences,
but we do not have that on the TM
dashboard yet, though I hope we do.
Get it soon.
K So the next one can all trademark
owners expect an audit during the
lifetime of their trademarks.
We cannot promise that.
We just say,
you know you want to be prepared
because you never know.
It is completely random, and again,
you know it really is the luck of the draw.
If you want to call it that as to
whether or not your registration will be
randomly randomly selected for audit.
But again,
keep in mind we're going to have these
new mechanisms mechanisms available soon.
Reexamination expungement where?
There's an opportunity for third parties
and the director of the USPTO to look into,
you know,
nonuse and failure to use in commerce
through those those proceedings as well.
Just to piggyback off that though
I had one more.
I have another question here you
should think about the audit not
just as a registration owner,
but now is the time of filing of new
applications 'cause there are multiple
milestones along the way in the pre
registration process where you can
make determinations about use in commerce.
It's a 1B application when you get
to that statement of use stage
you have an opportunity then to
remove goods or services.
There may be no longer have a
bonafide intent to use,
so I think now now that the audit
program has been around for several years,
it's really important to consider
what is going into your application
at that stage before you end up at a
registration stage and you
have to work backwards.
Alright, so this question is if
some goods are deleted on filing
the Section 8 or 71 declaration,
but later the client actually
starts using those goods.
Can we later add them back to their
registration or do we file a newer
it a new application so once goods
or services are deleted from a
registration they do not come back?
You will need to file a new application
for those goods or services.
So this one is a follow up on the
relevant use period question that I
asked answered a moment ago following up
the relevant use period is the answer.
The same for the 9th and 10th year renewal.
Absolutely it's for every period there,
after every 10 years.
You know they use should be within the
relevant that 10 year filing period with
the 20 year filing period going forward.
That's when your Section 8 or 71
declaration is attesting to use.
During that relevant filing period.
And looks like last chance, yeah?
So I think that's that's
pretty close to all of them.
I know that there are some questions
that haven't necessarily been answered,
but and so I know folks that you sent him in.
They're not necessarily
relevant to the topic today,
so that's probably one of the reasons
why the presenters aren't going to
get a chance to answer them, but.
But we pretty much hit all of my.
I think a lot of the questions have
really been have focused on what is the
best way for an attorney to help the
client avoid paying all of those fees.
And maybe it might be a good idea,
as we as we continue to wrap up
today to to really hit home.
Maybe one more time?
Like what is the best way to help
clients avoid paying those fees?
Montia, you want to take it?
Sure, I would again encourage you.
You know, right?
As you're approaching that,
that statutory relevant statutory
filing period.
5th year be at the 10th year the 20th year.
Check the ID.
Create a checklist and set each good
and service that's currently in your
registration on a separate line,
and then if you're the attorney you
want to work with your client to
have them to look to confirm use of
the mark with the specific goods and
services that are in their registration.
If they cannot confirm,
use then as soon as they can and
again before they file their
Section 8 or 71 declaration,
delete those goods and services.
If the of course,
there's no excusable nonuse
claim that can be submitted,
proactively delete anything
that they can't confirm.
Use for an.
That's really the way you and then,
of course,
collect any evidence and hold on
to that evidence,
and make sure any evidence that you have.
Identifies use during the relevant
statutory filing period.
Call thank you very much.
Have one more command.
I'm just checking to make sure and
see whether whether it's one that we can.
We can ask Jordan,
do you have anything that you want to
hit home as well as we closeout today?
Call your audit examiner with questions.
We try to be as helpful as possible
over the phone or by email,
and if you're just unsure about procedure
unsure about how to use the form just
just to help get your submission through,
give us a call.
We want to help.
We want to be as helpful as we
can can provide legal advice,
but we can certainly help you
walk you through the process and
get that response submitted.
We don't want to see a registration get
cancelled because the response just
couldn't get submitted for reasons
that were otherwise resolvable.
So, so please reach out. Yeah.
That's it. One more just came in Jordan.
Alright, so we got here.
Well that's a long one if you are
required to pay a deficiency fee,
will you be informed ahead of
time or must you
anticipate all and submitting
wait we have one, yeah?
Think we answered that one.
Yeah, I think we got that one.
But yeah, you you only have to pay
once in response, so you will.
You will get the office action that will
let you know what fees are owed and then
you have to pay the fees in response.
How about Jordan?
The last part of that?
Which is what are the consequences
of forgetting to submit the fee?
In the end,
you're going to get to a stage where.
You're going to get a third office
action that's going to require you.
This is a good question is we have not
really gotten this yet with the feral,
but at some point that he's going to have
to get paid and ultimately it's not.
The registration is going to cancel,
right?
You'll get an office action or go to say,
hey, you know you need to pay
the fee if the fees.
The only thing that's outstanding
then then we would issue that office
action to say you know we need
this fee to you know deletion fee,
efficiency, surcharge etc.
Yeah,
there is at some point a cut
off we can't just get every six
months a letter without the fee
that we asked for and expect.
Another office action is going
to go out at some point.
There is a cut off and that
registration is going to be cancelled.
And we have a couple more coming in,
so hold on,
folks will try and get to him here.
Well, actually let me.
I can ask you this one.
Jason, I'm sorry Jordan,
to sort of attack on So what happens
if your call is not returned
when you're calling the examiner?
What's the policy with regard to phone calls?
Is there a one to two business days
or what are we talking about here?
Sure, yeah, we, we we.
We ask that calls in return within 24 hours.
So one business day.
Email can be helpful as well.
We all kind of work.
Variety of hours are located
in different locations.
If you persistently have a hard
time getting ahold of somebody,
you know after several weeks,
contact that person's supervisor.
If you can locate that information
on the website,
or you can contact me or Montia,
that is fine as well.
If you're persistently having
a hard time getting ahold of
somebody and their out of office,
email is not provided instructions otherwise.
OK, and I did get another one about use.
Are you saying that you must
be in the 9th 10th year?
In other words,
you cannot claim use if it
was used in year six,
but not since that is absolutely correct.
It uses during the relevant statutory period,
whatever that statutory period is
for maintaining your registration.
It's a hold on. We might have
one more we can sneak in here
before we have to close out.
George said OK, can you pay multiple
deletion fees for deleting goods in the
same class when deletions are requested,
following multiple office actions?
OK, if I understand this right 'cause I'm
trying to think of a scenario this comes
up so frequently will have a response
to one of the few rule in effect where
the response makes deletions in a class,
but the fee for that class is not submitted,
so the second office action goes out
and the audit is not satisfied, so that
second office action will indicate that.
Let's say it's a one class,
so a fee of $200 was incurred
but not provided an.
If you make any additional deletions
in this second office action.
You will pay the fee again and so yes,
in that response to the Second Office action.
If you are making additional deletions,
you will pay at a minimum the 250,
initially incurred and then the fees
for anything deleted on top of
that on a per class basis,
and you want to pay all of that
in your second office action if
that Second Officer comes back,
makes the deletions,
but the fee is not paid,
you're gonna get another office
action with the fee amount and that
warning that if you don't respond to
that with the fees that the entire
registration will be cancelled.
And I have another one.
How are requests for Nonuse
handled during audit proceedings?
So if the initial Section 8 or 71
declaration includes a non use claim,
it is actually kicked out of the
audit because the purpose of our
audit is to check the accuracy
of use claims in a Section 8 or
71 declaration on occasion we do,
I think see Nonuse claims being
submitted after an audit is underway
and we do evaluate those and.
You know, George.
I think generally you can help
me out with this one.
It'll come down to cases
where they're saying,
you know,
during the midst of the of
the COVID pandemic they would.
You know,
respondents might say we can't get
to our warehouse to even check to
see if we have a good proof of you.
So we would allow for the audit to
conclude in those cases because again,
it's something that's beyond their control,
and so that's a way where it's
not necessarily non use.
But they're saying we can't prove
to you that we're using it.
And then in the cases where they
are responding by then,
saying actually are mark is not in use.
Do you want to in the context of an audit,
do you want to handle what what
we would do in those cases?
Sure, yeah.
So.
So to the two things that crop up a lot,
we do have a COVID related scheme
for handling nonuse specifically
to requested proof of use,
because the good research.
Well the more common services could
not be performed during the pandemic
due to perhaps the government
regulations that affect the ability
of the service is being performed,
that's.
Whole separate scheme where we have
procedures for evaluating those claims
and certain statements that have to
be made to conclude an audit.
However, we also do have a time
where once an audit is started.
If an unused claim under the ordinary
non use rules is being made,
a new Section 8 or 71 has to be filed.
A response that simply actually creates
that States and non use claim is not
sufficient because you cannot file a
section 871 that you claim there is
used and Elvis needs to be like now,
there's actually not use.
You need to file a new eight or
section A Section 8 or 71 to make that
claim that Section 8 or 71 will be
reviewed outside of the audit review
and will be handled under all the
normal rules for excusable nonuse.
OK, and I have another one.
What if you file a renewal during the
regular period and you get an office action?
Can you show use in the grace period?
The answer is yes because the
grace period is also a part of
the statutory filing period.
Alright, excellent,
that appears to be all that we have,
or at least all the technology is
allowing to extend it this time.
So let's go ahead and close it out.
So first of all, a big thank you,
both you Montia answer,
Jordan for hosting,
and for giving us all this great information
and would like to thank thank the crew
has been great in terms of making
sure all the tech is working properly.
And of course thank you to all of
you folks for attending today.
You are going to be getting a survey so
please take a minute or two to fill that out.
We really do look at the results
and we really do want to make sure
we're giving you the best possible
webinars that we possibly can.
So please,
if you can take it a minute or
minute or two to fill that out.
I also want to just very briefly.
Tell you folks just let me.
I'm going to share my screen here real quick.
Alright,
so just so everyone is aware because
the question always comes in is a copy
or a recording going to be available.
The answer is yes,
you will be able to find it here on
the understanding the trademark post
registration audit program page.
As you can see here,
it's going to be posted here and
it's also going to be posted on
the trademarks webinars series page,
so keep an eye out for that and also
wanted to let you know that there
we have some some additional fun
stuff that's going to be happening
Commissioner Gooder is going to be
doing a sort of fireside chat about
intellectual property in the Olympics.
That is on June 11th and you can
register early to or register at
anytime actually before it begins
to attend that.
And if you have those TMI questions,
by all means join us for the round table.
It is going to be, I believe, on the 14th.
Yes, on June 14th,
so please go ahead and sign up for that.
And of course,
obviously most of you folks on
this call today don't need a
trademark Basics bootcamp,
but if anybody in your organization
you think might want a little brush
up on all the trademark basics.
By all means,
please sign up and join us for
the Trademark Basics Bootcamp or
maybe even recommended to some
of your clients just to make sure
that they are up to speed on all
the things to make your meetings
with them more efficient.
If you haven't attended,
it is an 8 week series and we pretty
much cover all the basics that you
need to know from fundamentals all the
way through searching and through filing.
I even walked through a tease plus
form we talked about how to respond
to office action and then as you know,
so a lot of information.
That Montia is an expert on.
We talk about here in keeping
your registration alive,
so just want to point that out as
another possibility of this sort of
educational programming that we're
trying to do to make sure that you
have all the information possible.
So we're going to close it out.
We're just about on 4:30 Eastern,
so thank you again.
Very much for being with us
today and thank you again to
Montia and to Jordan for sharing
their knowledge with everyone.
Thank you so much and have
a great rest of your day.