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What You and Your Clients Need to Know About the USPTO’s Post-Registration Audit

SKU: IP7000
Total Credits
1 - 1.2
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Removing “deadwood” (registrations for marks that are not in use in commerce) from the Trademark Register has become an increasingly important priority for the USPTO in recent years. A few years ago, the USPTO instituted a permanent post-registration audit program by which it requires trademark registrants who file a Declaration of Use to submit proof of use for two additional items in each class, beyond the product for which a specimen is submitted.

This webinar will teach you about the post-registration random audit program, analyze the criteria that make a registration eligible to be selected for the audit, and explain how to respond to a post-registration audit Office action.

The USPTO reports that more than 80% of all audited registrants are represented by counsel, yet more than 50% of audited registrants delete goods when responding to the audit Office action. Learn best practices for preparing the Declaration of Use to ensure success if the registration is audited.

Lecturer Bio

Allison Strickland Ricketts, Esq.

Allison Strickland Ricketts has deep experience in evaluating the availability of proposed new trademarks, developing strategies to remove obstacles to adoption and registration of trademarks, and creating strong trademark rights that her clients can use and register with confidence. She has reviewed and evaluated thousands of trademark clearance searches, and has filed and prosecuted more than 2,500 U.S. trademark applications. Allison also maintains protection for older registrations in compliance with strict U.S. standards that require the owner to demonstrate it is making valid use of a trademark in commerce.

The 2020 World Trademark Review’s WTR 1000 noted Allison’s “exceptional knowledge of USPTO rules” and when the World Trademark Review was preparing its article on the “Top Takeaways from 2019,” they sought Allison’s opinion and quoted her in the article. For the third time in a row, she was named to MANAGING INTELLECTUAL PROPERTY’s list of the TOP 250 WOMEN IN IP worldwide, which “recognizes female practitioners in private practice who have performed exceptionally for their clients and firms in the past year.”

Allison is skilled at negotiating resolutions to disputes, preparing effective and advantageous settlement and coexistence agreements, and negotiating and drafting license agreements. Allison’s thoughtful and creative advice helps individuals, entrepreneurs, and businesses of all sizes make smart and cost-effective decisions about their valuable intellectual property.

A frequent speaker on the topic of trademark law and practice, Allison is especially in demand for insights on the Madrid Protocol system, overcoming difficult Trademark Office refusals to register marks, and structuring coexistence agreements.

Allison regularly attends USPTO events near her office in Alexandria, Virginia, frequently speaking with officials from the U.S. and other countries about policy issues and changes. She is active in many industry organizations, including the American Intellectual Property Law Association, having served on its Board of Directors and chaired or vice-chaired several of its committees over the years. Allison’s clients are drawn from the worlds of fashion, entertainment, consumer products, pharmaceuticals, non-profit organizations, innovative new technology, and many other industries.

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