Understanding audits and proof of use under trademark law

| Jun 3, 2020 | Trademark Law |

Simply because a trademark has been granted in New Jersey does not mean that there will never again be concerns about its maintenance. There are random audits conducted by the United States Patent and Trademark Office (USPTO) to ensure that trademark law is being adhered to. Since the trademark is for commerce, it is wise to know how and why the audit is conducted to avoid losing the trademark for improper use.

There are several reasons for an audit, but once the audit begins, it is key to know about the potential repercussions of an audit and proof of use. When asked for proof of use, the trademark holder must show that the mark is being used for commerce with that item or the services the person provides. For goods, that can include an image showing the mark placed on the item; a screenshot of a web page with the URL and date in which it was printed; a photo of the mark on a package where the item can be seen through the packaging; and a photo of the mark on a package with the generic name identified.

For services that have been trademarked, the person can show promotional materials with the trademark shown clearly and the services being advertised; a photo of the mark on the sign of a restaurant or retail outlet; a photo of the mark placed on service vehicles; and screenshots from a webpage just like the proof used for trademarked goods. If there is improper or inaccurate use of a trademark, the registration could be invalidated. In addition, the person or entity who was granted the initial trademark could have an issue applying again on the future.

Having a trademark can be a fundamental factor in maximizing the value of a brand or business. This also serves to protect the individual or entity from facing the challenge of another company trying to use its hard-earned creation for its own ends and failing to compensate the trademark holder. Since issues like auditing and proof of use can be complicated, it is wise to have legal advice from the beginning. A law firm that has experience in trademark law may be able to provide guidance and representation to handle a case.

Schedule A Consultation