Last updated on June 9th, 2020
Here’s an example of why you should treat your online business like a real business from Day 1. Without proper documentation, you won’t have a leg to stand on when the time comes to register a trademark for your brand.
USPTO apparently audits registrations. The screenshot is hard to read, so here’s what it says:
The USPTO is performing random audits of US trademark registrations to assess and promote the accuracy and integrity of the trademark register. See 37 C.F.R. §§2.161(h), 7.37(h). This registration has been randomly selected for audit to determine whether the mark is in use with all of the goods identified in the registration.
To comply with the audit, you must submit proof of use of the registered mark for two additional goods per class. Id. If proof of use for the goods identified is not available, the identified goods and any other goods not currently in use should be deleted from the registration.
Therefore, the owner must submit the following:
(1) Proof of current use of the registered mark in commerce for the following goods:
“Canvas shoes” and “children’s headwear” in International Class 25; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The owner was using the mark in commerce on or in connection with the goods identified in the registration for which use of the mark in commerce is claimed, as evidenced by the submitted proof of use, during the relevant period for filing the affidavit of use.” 37 C.F.R. §§2.161(h), 7.37(h).
Acceptable proof of use for goods includes photographs that show the mark on the actual goods or packaging, or photographs of displays associated with the actual goods at their point of sale. A tag or label that is not shown affixed to the goods is not acceptable proof of use. Similarly, a package that does not show or identify the goods therein is not acceptable proof of use.
Here is the screenshot:
In this case, the owner failed to provide proof, and the trademark is now canceled.
Takeaways (when filing for a trademark):
- only list the goods you are selling (or in 1B cases, intend to sell);
- get some products listed in each class (category) quickly; and,
- get dated proof of your earliest sales so you’ll have it if you are audited.
PS I avoided the serial number in the screenshot on purpose. Trade secrets, ya know!