USPTO Enhances Measures Against Fraudulent Trademark Specimens with Expanded Audit Program

The United States Patent and Trademark Office (USPTO) is intensifying its efforts to maintain the integrity of the trademark register by expanding its audit program to specifically target fraudulent specimens and overextended registrations. Unlike many jurisdictions, the U.S. requires trademark owners to periodically demonstrate active use of their marks in commerce to prevent cancellation. This policy ensures that the register accurately reflects marks in genuine use, thereby informing the public about the availability of trademarks.

In 2012, the USPTO initiated a random audit pilot program to assess the accuracy of use claims in registration maintenance filings. The findings were concerning: 51% of audited registrations could not substantiate use of the registered mark for all claimed goods and services. Consequently, in 2017, the USPTO made the audit program permanent, requiring randomly selected registrants to provide specimens, exhibits, affidavits, or declarations to prove active use in commerce.

Despite these measures, the USPTO has identified systemic attempts to bypass the requirement of demonstrating current use in the ordinary course of trade. Notably, some submissions included digitally created or altered mockups, and others appeared to originate from “specimen farms”—e-commerce sites designed solely to generate deceptive specimens.

To address these issues, the USPTO is expanding its audit program to include directed audits focusing on Section 8 and 71 filings that exhibit signs of fraudulent activity, such as digitally altered specimens or those sourced from specimen farms. The process mirrors the existing random audits: the USPTO issues an initial office action requesting proof of use for some or all goods or services covered by the registration, along with any additional relevant information.

Trademark owners should carefully review their registrations, especially those with extensive lists of goods or services, such as those filed under the Madrid Protocol, before submitting a declaration of use under Sections 8 or 71. Attempting to retain registrations for unused items or submitting fraudulent specimens is strongly discouraged, as such actions will attract increased scrutiny from the USPTO.

This expansion aims to deter deceptive practices and ensure that the trademark register accurately reflects marks actively used in U.S. commerce, thereby enhancing its reliability and utility for all stakeholders.

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