USPTO Audit Approach Influences Canada’s Trademark Reform

Trademark audits are a critical tool for maintaining the reliability and integrity of a nation’s trademark register. They ensure that trademarks genuinely in use are protected, while unused marks—often called "deadwood"—are cleared to make room for new applicants. The U.S. Patent and Trademark Office - that is, the USPTO - has led the charge in this domain since 2017, leveraging its audit program to declutter its register and keep trademark owners accountable. Now, the Canadian Intellectual Property Office, or CIPO has followed the USPTO’s example by initiating its own pilot audit program.

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Prove It or Lose It: How USPTO’s Audit Program Inspired Canada’s Trademark Oversight

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Erica R. Halstead

Transcript

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Trademark audits are a critical tool for maintaining the reliability and integrity of a nation’s trademark register. They ensure that trademarks genuinely in use are protected, while unused marks—often called "deadwood"—are cleared to make room for new applicants. The U.S. Patent and Trademark Office - that is, the USPTO - has led the charge in this domain since 2017, leveraging its audit program to declutter its register and keep trademark owners accountable. Now, the Canadian Intellectual Property Office, or CIPO has followed the USPTO’s example by initiating its own pilot audit program.

For trademark attorneys and intellectual property professionals, understanding these programs is vital to advising clients and safeguarding their rights. 

The USPTO audit program, launched in November 2017, was created to ensure the accuracy and integrity of the Federal Trademark Register. Its main objectives include removing unused or inaccurate trademark registrations, preventing unnecessary obstacles for new applications, and upholding the core purpose of trademark laws: to protect marks that are genuinely in use.

Prior to this program, the U.S. Register often contained “deadwood” registrations. These inactive trademarks blocked new applicants, created roadblocks for legitimate users, and eroded the reliability of the Register as a notice tool for third parties.

If a trademark owner is selected for an audit, they must provide evidence showing that their trademark is actively being used for the goods and services listed in their registration. Failing to do so can have serious consequences. Any goods or services not backed by proof of use may be removed from the registration. In more severe cases, where sufficient evidence isn’t provided for key items, the USPTO may cancel the entire trademark registration altogether.

This process imposes additional responsibilities on trademark holders, highlighting the importance of diligent recordkeeping and accurate listing of goods or services.

Recognizing the success of USPTO’s audit program, the Canadian Intellectual Property Office launched its own pilot trademark audit system, which started in January 2025. Trademark owners in Canada must now provide evidence of use or risk losing their rights. 

The initial program details reveal that 100 notices were issued in January 2025, with registrants randomly selected to either prove use or demonstrate exceptional circumstances for non-use. Following this, 50 additional notices will be issued each month in February and March as part of continued random audits.

CIPO’s pilot program is designed to assess the effectiveness and feasibility of trademark audits in Canada. Based on the results, the program parameters may evolve as it moves through different stages.

CIPO’s initiative, much like the USPTO program, aims to clear “deadwood” trademarks from its register, but there are some key differences between the two. One notable distinction is CIPO’s provisions for excusable non-use. Unlike the USPTO, CIPO allows goods listed under non-use to remain on the register if exceptional circumstances can be proven. Another area of uncertainty lies in the treatment of unused goods or services. It is still unclear whether CIPO will partially delete unused items or cancel the entire registration. These audit rules reflect the evolving nature of CIPO’s program, underscoring the importance of monitoring its development closely.

Canada’s Trademark Act abolished use requirements for trademark applications in 2019, leading to a flood of new filings. Without tools for monitoring whether those marks were actively used, the Canadian Register quickly became cluttered. CIPO’s pilot program is an attempt to address this, ensuring that registered marks aren’t serving as unnecessary barriers to new filings.

Both the USPTO and CIPO audit programs underline one key responsibility for trademark owners in North America—proof of trademark use is non-negotiable. With these programs in place, IP professionals must emphasize the importance of continuous monitoring and regular maintenance.

The USPTO and CIPO programs may share similarities, but their specific rules and penalties vary. Both, however, present a unified message to trademark owners—failure to stay vigilant can lead to significant losses.

For IP professionals advising clients across both regions, it’s essential to keep compliance top of mind and help them streamline trademark management processes. Active monitoring, proper documentation, and preempting potential audits should form the core of any effective trademark strategy.

By proactively managing trademark portfolios, businesses can best position themselves to safeguard their IP rights, avoid costly penalties, and contribute to the integrity and clarity of the trademark registry.

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