On December 18, 2021, the United States Patent and Trademark Office (USPTO) amended its rules of practice to enforce the congressional Trademark Modernization Act of 2020. These amendments include rules introducing two new procedures for invalidating certain kinds of unused trademark registrations: Expungement and Reexamination. Trademark applicants and owners should be aware about how these procedures function, whether to challenge others’ trademark registrations or defend their own, because a successful challenge may result in the USPTO cancelling the trademark for challenged good(s) and/or service(s), in part or even in whole.
Expungement
Any person may request that the USPTO expunge a registered trademark. The basis for an expungement proceeding of a registered trademark is that the mark has “never been used in commerce on or in connection with some or all of the goods and/or services recited in the registration.” (37 C.F.R. § 2.91(a)(1)). An expungement proceeding must be initiated while the registered trademark is in force, and either (1) for expungement proceedings made on or before December 27, 2023, at least three years after the trademark’s date of registration, or (2) for expungement proceedings made after December 27, 2023, at least three years after the trademark’s date of registration and before ten years following the trademark’s date of registration.
Reexamination
Similar to expungement, any person may request that the USPTO reexamine a registered trademark to invalidate all or a portion of the mark in question. The basis for a reexamination proceeding of a registered trademark is that the mark “was not in use in commerce on or in connection with some or all of the goods and/or services recited in the registration on or before the relevant date….” (37 C.F.R. § 2.91(a)(2)). The “relevant date” depends on the initial filing basis for the registration of the mark, and is defined as either (i) for a trademark registration based on use in commerce (section 1(a) of the Lanham Act), the filing date of the application, or (ii) for registration based on intent-to-use (section 1(b) of the Lanham Act), the later of either (A) the filing date of an amendment to allege use based on section 1(c) of the Lanham Act, or (B) the expiration of the deadline for filing a statement of use pursuant to 1(d), including all approved extensions.
Like an expungement proceeding, a reexamination proceeding must be initiated while the registered trademark is in force. However, unlike an expungement proceeding a reexamination proceeding must be filed no later than 5 years after date of registration of the mark. In other words, while a petitioner has no minimum period of time to wait before filing a trademark reexamination proceeding compared to an expungement proceeding, the reexamination petition must be brought within a shorter maximum time period than an expungement petition.
Petition Requirements
Whether a petitioner is petitioning for an expungement or a reexamination, the United States Patent and Trademark Office (USPTO) will only consider a complete application. In particular, the petitioner must identify each good and/or service in the registration for which the petitioner requests the proceeding be instituted. Furthermore the petitioner must provide a signed statement setting forth “elements of the reasonable investigation of nonuse,” where for each source of information relied upon, the statement includes a “description of how and when the searches were conducted and what the searches disclosed,” as well as documentary evidence supporting a prima facie case of nonuse. While the USPTO may offer petitioners a 30-day opportunity to correct imperfections, this does not allow the petitioner an opportunity to provide additional evidence and so the petition should include all desired evidence in the initial filing.
Reasonable Investigation
According to the amended Code of Federal Regulations, the petitioner “must make 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 specified in paragraph (c)(7) of this section by conducting a reasonable investigation.” In other words, regardless of whether the basis for the petition is “not in use in commerce [on or before the relevant date]” for a reexamination or “never in use in commerce” for an expungement, the petition must have made a “reasonable investigation.”
What is a “reasonable investigation? The Code of Federal Regulations describes it as an “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.” More specifically, the Code goes on to list exemplary sources of a reasonable investigation, including trademark records, internet websites likely or believed to be owned or controlled by the registrant, internet websites where the goods are likely to be advertised or offered for sale, and records of filings made with any State or Federal business registration or regulatory agencies. The Code states that a petitioner need not check all possible appropriate sources for the investigation to be reasonable.
Ex Parte Proceedings and Estoppel
After receiving a complete petition for an ex parte proceeding, the USPTO will determine whether a prima facie case of nonuse (i.e., that a “reasonable predicate” of nonuse has been established). If so, then the USPTO will initiate the appropriate reexamination or expungement proceeding, and the petitioner will have no further involvement. During this proceeding the USPTO will issue an Office Action to the registrant requiring providing evidence to rebut the prima facie case of nonuse, by establishing that the proper use in commerce has been made. If the registrant does not show use of the mark in commerce, establish excusable nonuse, delete the appropriate goods and/or service, or surrender the registration, the USPTO will issue a decision that the mark should be cancelled, and the registrant may in turn appeal or request reconsideration.
If as a result of an expungement proceeding it is shown that a challenged mark was used in commerce for any of goods and/or services at issue, no further expungement proceedings may be instituted as to those particular good and/or services. However because an expungement proceeding only involves a finding of whether a mark was never used in commerce, the expungement proceeding will not prevent a subsequent reexamination proceeding, where the question would be whether a mark was used in commerce on or before a relevant date. In contrast, if as a result of a reexamination proceeding it is shown that a challenged mark was used in commerce on or before the relevant date for particular goods and/or services, no further expungement or reexamination proceedings may be instituted as to those goods and/or services.
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