Expungement and Reexamination Proceedings under the Trademark Modernization Act

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

Grounds for Expungement and Reexamination

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.

Expungement

A petition for expungement:

• May be filed against any federal trademark registration (i.e., any registration filed under Sections 1, 44, or 66 of the Lanham Act,⁵ including registrations for collective and certification trademarks)
• Must identify and establish with evidence that the trademark has never been used in commerce on some or all the goods and/or services covered by the registration⁶

Reexamination

A petition for reexamination:

• May only be filed against federal trademarks registered under Section 1 of the Lanham Act,⁷ including supplemental registrations and registrations for collective and certification trademarks (i.e., it cannot be filed against trademarks registered under §§ 44 or 66)
• Must identify and establish with evidence that the trademark was not in use in commerce on some or all the goods and/or services covered by the registration as of the relevant date:
  • Use-based trademark application filed under Section 1(a), 15 U.S.C. § 1051(a). The relevant date is the filing date of the trademark application. If the filing basis
    of the trademark application is ever later amended to Section 1(b) for any of the goods/services covered in the petition, then the relevant date is that listed below.
  • Intent-to use trademark application filed under Section 1(b), 15 U.S.C. § 1051(b). The relevant date is the later of:
    - The filing date of an amendment to allege use under Section 1(c),⁸ which covers the goods/services that are the subject of the petition
    - The expiration of the deadline for filing a statement of use under Section 1(d),⁹ for the goods/services covered by the petition, including all approved extensions of the deadline for filing a statement
    of use¹⁰

Who May File

Third Parties

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.

USPTO Director

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:

• An amendment to delete the goods or services that are not in use (or were never in use)
• A surrender of the registration for cancellation if none of the goods or services are in use (or were never in use)²²

Time Limits for Filing a Petition

Expungement

A petition for expungement may be filed against any federal trademark registration during the following time periods:

• Until December 27, 2023. A petition may be filed against any registration that is three years or older.
• After December 27, 2023. A petition may be filed against a registration between years three to ten following the registration date.²³

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.

Reexamination

A petition for reexamination may be filed against any trademark registered under Section 1²⁴ in the first five years following the registration date.²⁵

Contents of a Petition for Expungement or Reexamination

A petition for expungement or reexamination must be in writing, filed through the USPTO Trademark Electronic Application System, and contain the following elements:

• Fee. The fee to file a petition is $400 per international class.²⁶
• Petitioner. Identify the petitioner’s name, domicile address, and email address. The petitioner identified does not need to be the real party in interest, but the USPTO Director can require this identity where needed.²⁷ Additionally:
  • If the petitioner’s domicile is not within the United States or its territories, then the petition must designate a qualified U.S.-licensed attorney.²⁸
  • If the petitioner must be represented by an attorney, then include the attorney’s name, postal address, email address, and bar information.²⁹
• U.S. trademark registration. List the U.S. trademark registration number for the registration being challenged. Only one registration number can be listed per petition.³⁰
• Basis. Identify either expungement or reexamination as the basis for the petition. It is not possible to assert both expungement and reexamination in a single petition.³¹
• Goods and/or services challenged. Identify each good and/or service covered by the registration that is challenged in the petition.
• Verified statement of reasonable investigation.
  The verified statement must:
  • Be signed by someone with firsthand knowledge of the facts
  • List the facts in numbered paragraphs
  • Identify the elements of the reasonable investigation of nonuse conducted including:
    • List each source of information petitioner relied upon
    • Describe how and when petitioner conducted each search in its investigation
    • Describe what each search showed³²
  • Contain a concise statement describing the relevant factual basis for the petition and any additional facts supporting the allegation of nonuse
• Documentary evidence of nonuse. Include a clear and legible copy of all supporting documentary evidence of nonuse and a correlating itemized index of such evidence.³³

Reasonable Investigation

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:

• The goods and/or services at issue
• The relevant industry and marketplace for such goods and/or services
• The normal trade channels and advertising for such goods and/or services³⁶

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:

• Searches of several websites where the types of goods are traditionally sold including Amazon, Home Depot, Lowe’s, Walmart, Dicks Sporting Goods, and US Gym Products
• Google searches for the trademark and the registrant
• Wayback Machine searches for the mark and the registrant³⁹

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:

• Searches should be comprehensive enough to cover the most likely sources of where goods and/or services would be expected to be sold and advertised, but you do not need to check every possible source.⁴¹
• A search should “encompass the relevant online sources that would be searched and returned if it was conducted by someone seeking information about a product or service that is in use in commerce.”⁴²
• A review of pages from a single website, or a single search using an internet search engine, is generally not considered a reasonable investigation.⁴³
• An investigation consisting only of a review of registrant’s portfolio of marks on the USPTO register and a review of the registrant’s website is likely insufficient.⁴⁴
• An investigation conducted by a private investigator is
  not required or expected, but the results of any such investigation may be referenced.⁴⁵
• Current evidence of nonuse is insufficient. The investigation must also include evidence documenting past nonuse.⁴⁶
• For a petition involving a design mark consider conducting a reverse image search.⁴⁷

The petitioner must submit the results of its reasonable investigation through both a verified statement and documentary evidence of nonuse.⁴⁸

Verified Statement

The verified statement of reasonable investigation must:

• Be signed by someone with firsthand knowledge of the facts
• List the facts in numbered paragraphs
• Identify the elements of the reasonable investigation of nonuse conducted including:
  • Each source of information petitioner relied upon
  • How and when petitioner conducted each search in its investigation
  • What each search showed⁴⁹
• Contain a concise statement describing the relevant factual basis for the petition and any additional facts supporting the allegation of nonuse⁵⁰

For example, for internet searches you should include a description of the following in the verified statement:

• The website that was searched
• The search term(s) that you used
• The date the search was conducted
• The results of the search (i.e., no hits returned or only hits returned were for irrelevant third parties, etc.)

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:

• USPTO record for the challenged registration. This is automatically of record in the proceeding, but if there are particular parts of the record that you would like to highlight, then attach it as evidence to your petition.⁵⁴
• Third-party USPTO applications or registration records. Include the specific documents from within the third-party USPTO record that are relevant to the alleged nonuse. Do not simply file the entirety of the USPTO record or just a listing of the prosecution history.
• State trademark records.
• Registrant’s website(s), social media sites, and/or other media believed to be owned or controlled by the registrant.
• Registrant’s marketplace activities. This could include any attempts to contact the registrant and to purchase any goods and/or services.
• Registrant’s fake, digitally altered, or otherwise insufficient specimen(s) of use. Generally, an issue with a specimen of use will only be sufficient to show nonuse for the particular good and/or service depicted in the specimen. It will not be sufficient on its own to establish expungement or reexamination for the entire class of goods and/or services.
• Third-party websites, social media sites, or other online media. In particular, any sites where the goods and/or services at issue would be likely to be advertised or offered for sale.
• Search engine searches.
• Internet Archive (Wayback Machine) screenshots. Such screenshots are effective in showing past nonuse, but make sure to capture the date range reflected in the screenshots.
• Press releases, news articles, journals, magazines, or other publications. In particular, those where the goods and/or services at issue would be likely to be reviewed or discussed.
• Litigation or administrative proceedings records.
• Federal or state business registration or regulatory filings or actions.⁵⁵

Documentary Evidence: Format

In addition to collecting evidence from appropriate sources, the following tips will increase the effectiveness of your evidence:

• Do not shrink screen captures when collecting screenshots from websites
• Make sure all internet screenshots have legible URLs and access or print dates
• Avoid data dumps by only including the relevant documents or portions of the documents (e.g., do not submit entire trademark registration records)
• For publications, include both the publication name and the date of publication
• Make sure all submitted evidence is legible⁵⁶

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:

• Be on its own separate page
• Include an identifier for each exhibit (i.e., Exhibit A or 1) that is used in and correlates to the corresponding discussion in the verified statement and petition
• Identify and explain for each exhibit which goods and/or services the specific exhibit is relevant to showing and/or supporting nonuse⁵⁸

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

Related Content

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).