U.S. trademark expungement and reexamination proceedings are now available.  This constitutes a major development in U.S. trademark practice.  A result of the U.S. Trademark Modernization Act., the new rules became effective December 18, 2021.

As ex parte proceedings, trademark reexamination and expungement have the potential to be more efficient and less expensive than trademark cancellation and opposition proceedings.  The takeaway?  To avoid challenges to registrations, trademark owners must remain vigilant.

Here’s what you need to know:

1. Trademark Expungement.  A party may request cancellation of some or all of the goods or services in a registration if it is shown that the registrant never used the trademark in connection with those goods or services.  A U.S. trademark expungement proceeding must be instituted between three and ten years after the registration date.  Until December 27, 2023, however, a proceeding may be requested for any registration at least three years old, regardless of the ten-year limit.

2. Trademark Reexamination.  This is available to seek cancellation of some or all of the goods or services in a use-based registration.  The grounds for doing so are that trademark was not use use in commerce with those goods or services on or before one the following particular dates:

  • if the underlying application was filed based on use, the relevant date will be the filing date of the application;
  • if the underlying application was filed based an intent to use, the relevant date is the later of the date that an amendment to allege use was filed or the date the deadline to file a statement of use expired.

This new procedure must be requested within the first five years after registration.

Here are facts common to both trademark expungement and reexamination:

  • Who can Petition.  Any person may file a petition with the USPTO to request institution of an expungement or reexamination proceeding. You’re not required to identify the name of the real party in interest on whose behalf the petition is filed, but the Director has authority to require that information in particular cases. For example, while an attorney can file the request in their name instead of their client’s name, the Director may require the attorney to provide the client’s identity. Foreign-domiciled petitioners are required to obtain U.S. counsel in order to file a petition.
  • How to file.   Submit a Petition for Expungement or Reexamination requesting that the USPTO Director institute a proceeding to cancel some or all of the goods or services identified in a trademark registration for which the trademark either has never been used in commerce for expungement or was not used in commerce before a particular relevant date for reexamination.

The request must include a verified statement that a reasonable investigation was conducted.  This requires a concise factual statement as well as evidence supporting a prima facie case of non-use.  In the event the Request does not satisfy the filing requirements, the USPTO will issue a letter that gives the petitioner 30 days to complete the petition.  The USPTO will make the request and evidence of record through the Trademark Status and Document Retrieval (TSDR) system.  All future correspondence involving the petition will be viewable in TSDR.

Practice tip:  Just because a petition is filed in either type of proceeding does not mean that the Trademark Office will act on it.  In fact, if a Petitioner fails to establish a prima facie case for a trademark expungement or trademark reexamination, the USPTO will decline to institute a proceeding.  If the initial burden is satisfied, the USPTO will commence the proceeding.  It is therefore important that all petitions are throughly investigated and documented.