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By: Jessica D. Bradley JONES DAY LLP
This article discusses ex parte expungement and reexamination proceedings at the U.S. Patent and Trademark Office (USPTO).
SUCH PROCEEDINGS SEEK FULL OR PARTIAL CANCELLATION of federal trademark registrations that do not meet the use in commerce requirements of the Lanham Act. The article discusses the grounds for each type of petition, procedural considerations including time limits and who can file, requirements for investigating and filing petitions, a registrant’s options for proving use or otherwise responding to petitions, and how the USPTO processes and examines the petitions.
The Trademark Modernization Act (TMA), enacted on December 27, 2020, amended the Lanham Act to establish the new expungement and reexamination proceedings. The goal of the proceedings is to foster clearing clutter (i.e., trademarks that are not properly in use in commerce) from the USPTO trademark register that may be blocking legitimate business owners from clearing and registering their marks.1 Additionally, the proceedings are intended to provide a more efficient and less expensive alternative to a contested Trademark Trial and Appeal Board (TTAB) inter partes cancellation proceeding.2 While the grounds for expungement and reexamination differ, many of the procedures for instituting the proceedings are largely the same, including the nature of the evidence and the process for evaluating the petitions and the registrant’s response.3
On December 18, 2021, the USPTO rules governing expungement and reexamination proceedings became effective and the USPTO began accepting petitions. The USPTO issued an examination guide that governs the proceedings until the guidance can be incorporated in the next update of the Trademark Manual of Examining Procedure.4 Each type of petition is focused on a particular type of nonuse.
A petition for expungement:
A petition for reexamination:
Any third-party company or individual may file a petition for expungement or reexamination.11 You do not have to meet the TTAB requirements for opposition and cancellation proceedings of showing an entitlement to a statutory cause of action (i.e., standing). Additionally, you are not required to identify the actual party with an interest in the proceeding, but can, for example, file a petition in an attorney’s name rather than a client’s name.12 You may want to consider this option if you have grounds to believe that the trademark registrant might take action against you in response to a petition. However, the USPTO Director can require the attorney to identify his or her client, (i.e., the real party in interest), such as to discourage and prevent abusive filings.13
If the USPTO accepts a petition for expungement or reexamination, then the petitioner’s role in the proceeding ends upon issuance of the notice of institution.14 The remainder of the proceeding is conducted between the USPTO and the registrant. If you prefer a more active role, you may consider filing a cancellation action at the TTAB asserting the new ground of expungement established under the TMA. Expungement requires you show that a registered trademark has never been used in commerce and is available any time after the first three years from the registration date.15 However, if the registrant contests the TTAB cancellation (i.e., does not default), then the proceeding is likely to be longer and more expensive than a petition for expungement or reexamination.
The USPTO Director also may begin an expungement or reexamination proceeding.16 Director-initiated proceedings are available on the same grounds as third-party petitions and are subject to the same time limits and procedures.17
The USPTO Director may also institute an expungement or reexamination against a registration covered by a pending third-party petition for goods/services that are not covered by the third-party petition.18
The USPTO considered and rejected a suggestion that it provide an email address for use in notifying the USPTO Director of registrations third parties believed were vulnerable to a Director-initiated expungement or reexamination proceeding.19 Where a third party believes grounds exist for expungement or reexamination the proper procedure for notifying the USPTO is for that third party to file such a petition.20
Trademark Registrants Prohibited from Filing against Own Registration
Trademark registrants cannot file a petition for expungement or reexamination against their own trademark registrations.21 If there are goods or services in your own registrations that are not in use, then you should file either:
A petition for expungement may be filed against any federal trademark registration during the following time periods:
Given the limited exception until December 27, 2023, consider reviewing the register for any existing registrations that could present an issue for your client’s current or future marketing plans. If you can establish the required lack of use you may want to file a petition to clear any potentially blocking registration before the limited exception expires.
A petition for reexamination may be filed against any trademark registered under Section 124 in the first five years following the registration date.25
A petition for expungement or reexamination must be in writing, filed through the USPTO Trademark Electronic Application System, and contain the following elements:
The TMA requires that petitions for expungement and reexamination include the results of a reasonable investigation. It must be “a bona fide attempt to determine if the registered mark was not in use in commerce or never in use in commerce on or in connection with the goods and/or services” identified in the petition.34 The USPTO defines a reasonable investigation as:
[A]n appropriately comprehensive search, which may vary depending on the circumstances but is calculated to return information about the underlying inquiry from reasonably accessible sources where evidence concerning use of the mark during the relevant time period on or in connection with the relevant goods and/or services would normally be found.35
What will constitute a reasonable investigation is a case-by-case determination depending on:
For example, “evidence of sales of a large, specialized commercial product may not be returned by the results of internet searches and may require additional efforts to satisfy the showing needed to establish a prima facie case.”37 Additionally, in a recent Director-initiated expungement proceeding involving a registration covering consumer goods like floor coverings and gymnastics mats owned by a foreign registrant, the USPTO found it would be “reasonable to expect that if the mark were used in U.S. commerce, the registrant would have an internet presence and references to the mark would be found through searches of internet sources where goods of the type are traditionally sold.”38 The USPTO’s evidence included:
The lack of hits for any products on the online retail sites and the lack of references to the registrant or its mark in the general internet searches both supported a prima facie case of nonuse.
The relevant use of the trademark for the investigation is that consistent with use in commerce as defined in the Lanham Act, (i.e., “bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark”).40
Consider the following guidelines in meeting the reasonable investigation standard:
The petitioner must submit the results of its reasonable investigation through both a verified statement and documentary evidence of nonuse.48
The verified statement of reasonable investigation must:
For example, for internet searches you should include a description of the following in the verified statement:
A verified statement must be corroborated by documentary evidence of nonuse.51
Documentary Evidence of Nonuse
You should submit documentary evidence supporting all statements in the verified statement. For example, if the verified statement states that you ran internet searches that returned no hits, capture and submit screenshots showing these results.52
Documentary Evidence: Sources
Appropriate sources of documentary evidence should be reasonably accessible sources that can be publicly disclosed.53 Such sources may include, but are not limited to:
Documentary Evidence: Format
In addition to collecting evidence from appropriate sources, the following tips will increase the effectiveness of your evidence:
Index of Evidence
The USPTO requires you to submit an itemized index of all the documentary evidence.57 Do not just list the exhibits. Instead, the index should:
In the initial set of petitions filed with the USPTO, the failure to include the index of evidence was one of the most common mistakes. Including a well-organized index of evidence that identifies each piece of evidence and connects it to the specific goods and/or services at issue will increase the chances of your petition being accepted provided you have sufficient evidentiary support.
For information on filing procedures, petition review, records, and responding to a petition, follow this link to read the full practice note in Practical Guidance.
Jessica D. Bradley is a former partner at Jones Day. Jessica has more than 15 years of experience litigating trademark, trade dress, false advertising, unfair competition, dilution, and copyright cases. She also counseled clients on trademark clearance, prosecution, and enforcement, and represented clients before the TTAB.
To find this article in Practical Guidance, follow this research path:
RESEARCH PATH: Intellectual Property > Trademarks > Practice Notes
For an overview of opposition and cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO), see
> TTAB PROCEEDINGS RESOURCE KIT
For a discussion on the key changes to trademark law contained in the Trademark Modernization Act of 2020, see
> TRADEMARK MODERNIZATION ACT OVERVIEW
For guidance on representing clients at trademark cancellation proceedings at the TTAB, see
> TTAB LITIGATION: CANCELLATION PROCEEDINGS
For a collection of resources on trademark searching and clearance, including Practical Guidance practice notes, templates, and checklists, see
> TRADEMARK SEARCHING AND CLEARANCE RESOURCE KIT
For an analysis of the requirement to prove that a defendant used a trademark in interstate commerce in order to establish a trademark infringement claim, see
> 1 GILSON ON TRADEMARKS § 3.03
For comprehensive information on key trademark law principles, see
> TRADEMARK FUNDAMENTALS
1. See Changes to Implement Provisions of the TMA, 86 Fed. Reg. 64,300 (Nov. 17, 2021). 2. 86 Fed. Reg. 64301. 3. Id. 4. See USPTO Examination Guide 1-21, Expungement and Reexamination Proceedings Under the Trademark Modernization Act of 2020 (Dec. 2021) (Examination Guide 1-21). 5. 15 U.S.C.S. §§ 1051, 1126, 1141f. 6. 15 U.S.C.S. § 1066a(a); 37 C.F.R. §§ 2.91(a)(1), 2.92(g). 7. 15 U.S.C.S. § 1051. 8. 15 U.S.C.S. § 1051(c). 9. 15 U.S.C.S. § 1051(d). 10. 15 U.S.C.S. § 1066b(a)–(b), (k); 37 C.F.R. §§ 2.91(a)(2), 2.92(g). 11. 15 U.S.C.S. §§ 1066a(a), 1066b(a). 12. 86 Fed. Reg. 64308. 13. 37 C.F.R. §§ 2.91(h). 14. Examination Guide 1-21, at p. 7. 15. 15 U.S.C.S. § 1064(6). 16. 15 U.S.C.S. §§ 1066a(h), 1066b(h); 37 C.F.R. § 2.92(b). 17. Id. 18. 37 C.F.R. § 2.92(c)(2). 19. 86 Fed. Reg. 64311. 20. Id. 21. 86 Fed. Reg. 64301. 22. 15 U.S.C.S. § 1057(e). 23. 15 U.S.C.S. § 1066a(i); 37 C.F.R. § 2.91(b)(1). 24. 15 U.S.C.S. § 1051. 25. 15 U.S.C.S. § 1066b(i); 37 C.F.R. § 2.91(b)(2). 26. 37 C.F.R. § 2.6(a)(26). 27. 37 C.F.R. § 2.91(h). 28. 8 Trademark Manual of Examining Procedure § 601. 29. 37 C.F.R. § 2.17(b)(3). 30. Examination Guide 1-21, at p. 3. 31. Id. 32. 37 C.F.R. § 2.91(d). 33. 15 U.S.C.S. §§ 1066a(b), 1066b(c); 37 C.F.R. § 2.91(c); Examination Guide 1-21, at p. 4. 34. 15 U.S.C.S. §§ 1066a(b)(3)(A); 1066b(c)(3)(A). 37 C.F.R. § 2.91(d). 35. 37 C.F.R. § 2.91(d)(1). 36. 86 Fed. Reg. 64302; Examination Guide 1-21, at p. 5. 37. H.R. Rep. No. 116-645, at 15 (2020). 38. See Trademark Status & Document Retrieval (TSDR) record for U.S. Registration No. 5513424. 39. Id. 40. 15 U.S.C.S. § 1127; see also 8 Trademark Manual of Examining Procedure § 901. 41. See 37 C.F.R. § 2.91(d)(2)(viii). 42. 86 Fed. Reg. 64310. 43. See H.R. Rep. No. 116-645, at 15. 44. See TSDR record for U.S. Registration No. 5527146. 45. 86 Fed. Reg. 64303. 46. Examination Guide 1-21, at p. 5. 47. See USPTO presentation, Insights into Trademark Modernization Act Nonuse Cancellation Petitions (Slide 10). 48. 37 C.F.R. § 2.91(c)(8)-(9). 49. 37 C.F.R. § 2.91(d). 50. 37 C.F.R. § 2.91(c)(8). 51. 37 C.F.R. § 2.91(c)(9). See USPTO presentation, Insights into Trademark Modernization Act Nonuse Cancellation Petitions (Slide 10). 52. See USPTO guidance on best practices at USPTO implements the Trademark Modernization Act. 53. Examination Guide 1-21, at p. 5. 54. See 37 C.F.R. § 2.92. 55. See 37 C.F.R. § 2.91(c)(9), (d)(2); USPTO guidance on limitations of proceedings and best practices at USPTO implements the Trademark Modernization Act. 56. See 37 C.F.R. § 2.91(c)(9)(iii)-(iv); USPTO guidance on limitations of proceedings and best practices on the USPTO website. 57. 37 C.F.R. § 2.91(c)(9). 58. See USPTO guidance on best practices at USPTO implements the Trademark Modernization Act. For a good example of an index of evidence, see the Director-initiated proceeding in the TSDR record for U.S. Trademark Registration No. 6372057 (at p. 3-4).