Trademark Auditing is More Important than Ever: Trademark Registration Requires a Lot More than Simply Filing with the USPTO

The United States Patent and Trademark Office, like most government offices, survives on the accuracy of its data.  Trademark applications and other submissions to the USPTO are expected to be accurate.  A simple mistake in the listing of goods and services can be seen as perpetrating a fraud on the USPTO and will completely invalidate an application, even where the other listed goods and services were not affected by the mistake.  This makes trademark auditing an extremely important part of any trademark holder’s intellectual property protection strategy.  Trademark auditing is an evaluation of a company or individual’s marks to ensure that those marks remain accurately registered in association with the correct classes of goods or services.  Failing to accurately register or monitor your marks can result in losing one of your most valuable assets: the goodwill associated with your trademark.

Bose found out the hard way that trademark auditing is one of the most important things it can do to protect its rights.  In 2007, the USPTO recognized that there was an error in Bose’s renewal for its WAVE mark, which was used in association with its home audio players.  Bose had listed cassette tape players among the goods that were sold under the WAVE mark, but they no longer sold the Wave Radios with built-in cassette tape players.  The Trademark Trial and Appeal Board (TTAB) saw this mistake as a fraud on the Office and cancelled Bose’s registration outright.  Thus, Bose lost its rights to the WAVE mark through a simple mistake that could have been caught through careful trademark auditing.

Bose is not an extreme case, but rather the TTAB’s new rule.  The TTAB expects that everything submitted to the Trademark Office will be accurate and it doesn’t matter whether an error or omission was in good faith; the TTAB has done away with any subjective intent requirement for its fraud standard and will find fraud from the objective facts of the application.

Simply put, it has never been more important to have your trademark portfolio continuously audited for mistakes and changes in your products or services line.  Failing to do so could result in the loss of your most valuable asset: the name that consumers have come to associate with the quality of your goods or services.