New USPTO Proceedings: Expungement & Reexamination
The USPTO has new mechanisms to challenge a trademark registration for non-use. These proceedings are ex parte. The expungement proceeding should be utilized if it is determined based on evidence that the trademark was never used in commerce for the goods and/or services in the registration or if the Mark was only used in commerce for some of the goods or services, but not all. A Petition to the Director should be filed using the TEAS forms requesting cancellation of the trademark registration in its entirety or in part. The expungement proceeding may be utilized three years after the registration date until 10 years post registration. However, during a limited time period the ten-year limit will be disregarded, and a Petitioner can file a proceeding even if the ten-year period has passed. This relaxation of the filing period is valid until December 27, 2023. Expungement proceedings can be filed against trademark registrations registered under Sections 1, 44, or 66 of the Trademark Act.
The reexamination proceeding should be utilized if it is determined based on evidence that the trademark was not used in commerce by a certain relevant date. These dates will depend on whether the trademark application was filed based on use or a bona fide intent to use. If the application was filed based on use in commerce, the Mark must have been used in commerce with all the goods or services identified in the application, by the filing date of the application. If the application was filed based on intent to use, then the relevant date is the later of either the date the Allegation of Use was filed or the date for the deadline for filing the Statement of Use. A petition for reexamination must be filed within the first five years post registration and only against registrations registered under Section 1 of the Trademark Act.
The Petition form will request that the Petitioner enter a Registration Number for the trademark. The form will require the Petitioner to request the grounds for cancellation. The Petitioner can choose either or both of the following grounds: (1) The trademark is registered under 1, 44, or 66 of the Trademark Act and has never been used in commerce for some or all of the goods and/or services identified in the trademark registration; (2) The trademark is registered under Section 1 of the Trademark Act and was not in use in commerce with some or all of the goods and/or services identified in the trademark registration on or before the relevant date. Be sure to read the Examination Guide1-21, Expungement and Reexamination Proceedings under the Trademark Modernization Act of 2020 before submitting a Petition.
In addition to stating the grounds for cancellation, the Petitioner will need to explain the elements of the “reasonable investigation” that was conducted for nonuse through a verified statement. For each source of information referenced in the Petition, there must be an explanation for how and when the searches and/or investigations were conducted, and what the searches or investigations disclosed. There must also be a factual statement of the basis of cancellation.
What a “reasonable investigation” entails will vary based on the circumstances of each case and the different trade channels for various goods and services. Since the investigations may have to focus on past activities, it will be appropriate to include a search for archival evidence including, cached web pages from sources such as Wayback Machine®. Sources of evidence may include trademark records on the state or federal level, websites that the Registrant owns or controls, records of litigation or administrative proceedings likely to reveal evidence of the Registrant’s use or nonuse of the registered Mark, google searches, evidence showing that the Petitioner unsuccessfully tried to purchase the branded goods or services, websites in specific trade channels, or social media evidence.
The results of each search must be specified. Evidence (true copies of the search results) should be attached to the Petition and uploaded as Exhibits. The Petition and the evidence submitted must rise to the level of a prima facie case of nonuse. If it does, the Registrant will be able to present evidence of use rebutting the prima facie case. If the Petition is instituted, the Petitioner will have no further involvement. If a Notice of Termination issues, some or all of the goods or services will be cancelled accordingly. For more information on the Trademark Modernization Act, see the firm blog entitled, The USPTO Is Implementing The Trademark Modernization Act. Please feel free to contact the firm with any related trademark questions.