There are over 2,750,000 trademarks registered in the United States. Each of these registrations allows the owner to protect the goods and services listed in the application. However, some of these registrations contain goods and services that the registrant has never sold in the United States. The existing USPTO procedures allow these applications to register without further information about the applicant’s sales.
With the passage of the Trademark Modernization Act, third parties will be able to file a petition through a formal procedure to “expunge” goods and services that the USPTO should never have registered in the first place. Petitioners will also be able to request that the USPTO “reexamine” trademark registrations. The best part? Once initiated, the petitioner doesn’t participate, and the USPTO will take it from there.
These groundbreaking procedures begin December 18, 2021, and here is everything brand owners, attorneys, and trademark applicants should know about these new procedures.
Why is the USPTO Offering Trademark Expungement and Trademark Reexamination Proceedings?
When developing a new brand, a business will spend a significant amount of time and money coming up with the perfect name. But what happens when that perfect name overlaps with prior registrations for products that never appear to have been sold by the registrant?
The business owner will be in a good position to “expunge” those goods from the registration or request “reexamination” of the registration.
A trademark applicant must be using the trademark in connection with all goods and services listed in a use-based trademark application before the USPTO will issue a registration.
However, an increasing number of applicants either do not understand this requirement or purposefully ignore it to gain broad protection that they are not entitled to. Under the former system, the only remedy available to third parties was a Petition to Cancel, which is a procedure that closely resembles federal litigation and can take months, if not years to resolve, and is often quite expensive.
With trademark expungement and reexamination proceedings, the USPTO will require a registrant to provide additional evidence that they are selling every item listed in their application, or the USPTO will delete those items. In some cases, the USPTO will even cancel a registration.
How Trademark Expungement and Reexamination Procedures Work
Starting on December 18th, 2021, the USPTO will begin accepting petitions for Expungement and Reexamination. The USPTO released its final rules on November 17th, 2021, which can be found on the Federal Register.
Should you choose an “expungement” or “reexamination” proceeding?
One of the more confusing elements of the new procedures is that there are two – expungement and reexamination. So which should a petitioner use?
The petitioner would use a petition for expungement if the relevant registered trademark has never been used in commerce or connected with some or all of the goods and/or services listed in the registration.
A petition for reexamination must allege that the trademark was not in use in commerce on or in connection with some or all of the goods and/or services listed in the registration on or before the date that the USPTO required the registrant to file its proof of use (whether with the application or, later, through a Statement of Use.)
For the most part, they accomplish the same thing with the same procedure. There are only minor differences.
When can you file an expungement or reexamination proceeding?
A petitioner can file an expungement petition between 3 and 10 years following the date of registration. There will be a three-year grace period before the 10-year cap will go into effect (on December 27, 2023).
A petitioner may request a reexamination petition during the first five years following the date of registration.
What must a petition to start an expungement or reexamination proceeding include?
The Petition for Expungement or Reexamination must include:
- The $400 fee, per class;
- The targeted U.S. trademark registration number;
- The basis for the petition (either expungement or reexamination)
- The name, domicile address, and email address of the petitioner;
- if the petitioner is not a U.S. citizen/company, then the name of its U.S. attorney;
- If the petitioner is, or must be, represented by an attorney, the attorney’s name, postal address, email address, and bar information;
- A list of each good or service recited in the target registration that the petitioner would like expunged or reexamined
- A verified statement that sets forth:
- The elements of the reasonable investigation of nonuse the petitioner conducted, and, for each source of information relied upon, a description of how and when the searches were conducted and what the searches disclosed;
- A statement of the relevant basis for the petition, including any additional facts that support the allegation of nonuse of the mark in commerce on or in connection with the relevant goods and services; and
- A clear and legible copy of all documentary evidence supporting a prima facie case of nonuse of the mark in commerce and an itemized index of such evidence.
If a petitioner does not meet these requirements, the USPTO will issue a letter providing 30 days to cure the defects.
How do you meet the requirement to conduct a “reasonable investigation” in your proceeding?
The petitioner must detail the steps taken to uncover any potential use in the United States by the registrant for the goods or services the petitioner would like expunged or reexamined. This investigation must be “reasonable.” A “reasonable investigation” will change depending on the specific goods and services. In general, it must be “likely to reveal use of the mark in commerce” with the relevant goods and services. The investigation should focus on the likely trade channels of the particular goods and services and advertising that the registrant would likely use to advertise those products and services. The petitioner will need to describe the sources searched, the methodology used, and the information found resulting from the search (if any.)
The investigation sources should be reasonably available to the public and be proprietary or confidential, as all proceedings will be public records. A petitioner’s investigation must look at past usage of the mark for the goods and services as well, using archival evidence like the Wayback Machine’s “archive.org” or other website caching or archiving services.
The USPTO has explicitly stated that: “As a general matter, a single search using an internet search engine likely would not be considered a reasonable investigation.” However, a comprehensive and exhaustive search is also not required.
Appropriate sources of evidence and information for a reasonable investigation may include, but are not limited to:
- State and Federal trademark records;
- internet websites and other media likely to or believed to be owned or controlled by the registrant;
- internet websites, other online media, and publications where the relevant goods or services likely would be advertised or offered for sale;
- Print sources and web pages likely to contain reviews or discussion of the relevant goods or services;
- Records of filings made with or of actions taken by any State or Federal business registration or regulatory agency;
- The registrant’s marketplace activities, including, for example, any attempts to contact the registrant or purchase the relevant goods or services;
- Records of litigation or administrative proceedings reasonably likely to contain evidence bearing on the registrant’s use or nonuse of the registered mark; and
- Any other reasonably accessible source with information establishing that the mark was never in use in commerce (expungement) or was not in use in commerce as of the relevant date (reexamination), on, or in connection with the relevant goods or services.
Practitioners should be aware that “in an ex parte proceeding, a practitioner shall inform the tribunal of all material facts known to the practitioner that will enable the tribunal to make an informed decision, whether or not the facts are adverse.” If evidence is available to the petitioner (and their attorneys) showing evidence of use, the petitioner must disclose that evidence to the USPTO.
How do you establish a prima facie case of “relevant nonuse”?
The USPTO will only institute an expungement or reexamination proceeding in connection with the goods or services for which a prima facie case of relevant nonuse has been established. The evidence provided by the petitioner’s reasonable investigation will form the basis for whether a prima facie case has been established, as long as the evidence provides sufficient notice of the claimed nonuse to allow the registrant to respond to and potentially rebut the claim with competent evidence.
How are notifications made of expungement and reexamination petitions and proceedings?
Expungement and Reexamination petitions will be publicly available through the USPTO’s TSDR database, and the USPTO will send a notice to the registrant that a petition has been filed against it.
Once the USPTO approves the petition, it will send a notice of that determination to the petitioner and the registrant, along with the means to access the petition and supporting documents and evidence. If the USPTO denied the petition, the petitioner has no mechanism to appeal this decision, as it is final and unreviewable. The petitioner will lose its filing fee (but can file again with new/more complete information.)
In by far the most significant advantage of these petitions over a traditional Petition to Cancel, if the USPTO institutes a proceeding, the petitioner will not have any further involvement.
What is the timeline for expungement and reexamination proceedings?
Once initiated, the USPTO will issue an Office Action to the registrant, who must respond within two months. If the registrant fails to respond timely, the USPTO will terminate the proceedings, and the USPTO will cancel the registration as appropriate.
In responding to an Office action, the registrant will need to provide such evidence of use, such as information, exhibits, affidavits, or declarations as may be reasonably necessary to establish that it had commercial use of the mark at the appropriate time for each good or services listed in the Office Action.
This evidence will likely take the form of “specimens” of use, such a packaging, advertising, or other typical specimens, but the USPTO will accept any evidence of use, including affidavits, receipts, and other items not typically accepted as “specimens” by the USPTO during the examination.
One exception to this rule is for foreign registrants who filed under Section 44 or 66 (the Madrid Protocol). Those registrants can submit evidence that the nonuse is due to exceptional circumstances that excuse the nonuse. “Excusable nonuse” is a high bar, and registrants should be wary of making this claim unless necessary.
Registrants may also respond to an Office Action by deleting some or all of the goods and/or services at issue in the proceeding for a fee. However, no other amendment to the identification of goods and services in a registration will be permitted as part of the proceeding.
If canceled, the registrant may request reinstatement of the registration and resumption of the proceeding if the registrant failed to respond to the Office action because of an extraordinary situation. This reinstatement petition must be filed no later than two months after the date of actual knowledge of the cancellation of goods or services in a registration and no later than six months after the date of cancellation as indicated in TSDR. The petition must include a substantive response to the Office Action.
If the registrant does not meet the requirements for a response, the USPTO will provide the registrant with an additional 30-day period to provide further information.
If the registrant provides a timely response, the USPTO will review the response and make its determination. Ultimately, if the USPTO finds that the registrant has demonstrated relevant use of the mark for the goods or services at issue or deleted the relevant goods or services, the USPTO will terminate the proceeding, and USPTO will not cancel the registration.
If, however, the response fails to establish use of the mark in commerce at the relevant time for all of the goods and/or services at issue, the USPTO will issue a final action.
If a final action is issued, the registrant will have two months to file a request for reconsideration or an appeal to the TTAB, if appropriate. If the registrant does not file an appeal, the USPTO will also issue an order canceling the registration in whole or in part following the examiner’s decision in the final action.
Limitation of new proceedings: Trademark registrants can only face reexamination or expungement once per each product or service
In general, once a registrant successfully “wins” an expungement or reexamination proceeding and shows the appropriate proof of use, the registrant will be shielded from future expungement or reexamination proceedings for the same goods or services. There are a few rare exceptions where a reexamination proceeding could be followed by an expungement proceeding for the same goods or services if the appropriate evidence was available to meet the expungement standard and timing.
While an expungement proceeding is pending, no later expungement proceeding may be instituted for the same goods or services at issue in the pending proceeding. While a reexamination proceeding is pending, the USPTO will not initiate expungement or reexamination proceeding for the same goods or services at issue in the pending proceeding.
The USPTO Director (or, more realistically, a team set up by the Director’s office) has the discretion to initiate either an expungement or reexamination proceeding without a third party petition if the Director discovers information that supports a prima facie case that the trademark has never been used in commerce or was not used by the relevant date.
Choosing Between Trademark Expungement/Reexamination and Petition to Cancel Proceedings
|Petition to Cancel
|Can be used if goods/services listed in application were never sold or provided in the U.S.
|Can be used if goods/services listed in application were never sold or provided in the U.S.
|Cannot be used to argue abandonment (or any other causes of action).
|Can be used if the goods/services were once used, but are now abandoned.
|Costs $400 per International Class
|Costs $600 per International Class.*
|Will likely take 60-90 days to process if not uncontested. If contested, timing could increase based on level of appeal.
|Takes ~90 days to process if a default judgement. If contested, could take years.
|Once submitted, no input from Petitioner.
|Once submitted, Petition is a party to the proceeding.
|Filing involves more research and investigation upfront.
|Petition to Cancel is a less intensive document.
|Cannot be withdrawn by Petitioner once instituted.
|Can be withdrawn without prejudice any time before an Answer is filed.
|Can be filed up to 10 years after the registration date.**
|Nonuse claims can be filed up to 5 years after registration; Abandonment claims can be made at any time
|Will be less expensive than a contested TTAB proceeding.
|Will likely be less expensive than expungement/reexamination.
|But will likely be more expensive than a TTAB proceeding that defaults.
|Costs can quickly escalate if contested.
*$200 refund offered for Petition to Cancel based on abandonment that results in a default judgement.
**For use-based application – 3-10 for Section 44/66
How Will These Proceedings Help to Remove Invalid Trademark Registrations?
Many foreign trademark applications, particularly mass filings made by Chinese companies, will include 10-12 items in a single class.
For example, consider the registered trademark FIETODK for:
International Class 26: Tassels; Wigs; Zippers; Artificial Christmas garlands; Artificial corsages; Artificial flowers; Artificial wreaths; Charms for shoes; Electric hair-curlers, other than hand implements; Electric hair waving implements; False beards; Hair bands; Non-electric hair curlers, other than hand implements; Rubber bands for hair; Tape for fixing wigs; Hair barrettes.
However, the specimen provided shows hair bands.
A search of Amazon and other marketplaces shows no evidence that FIETODK-brand items were ever sold anywhere in the United States. While this is not conclusive evidence, it is certainly compelling and might indicate that the registrant never sold these items in the marketplace (which is, as mentioned above, a requirement for registration).
A third party could, under the current rules, file a Petition to Cancel for “nonuse,” “abandonment,” or even “fraud.” The government fees to undergo any one of these procedures is $400 per class in addition to any legal fees incurred by using an experienced attorney. Filing a Petition to Cancel would start a litigation-like proceeding where the petitioner would assume all of the risks and costs to prove that the other party did not use the mark as required.
Under trademark expungement, a third party could perform a deep search of the marketplace and then provide evidence of nonuse to the USPTO. The USPTO would take it from there, requiring zero additional input from the original petitioner and proceeding to “expunge” the target registration of the unused goods or services (or potentially the entire registration.)
In our example, a trademark expungement petitioner would file the expungement petition, provide evidence to the USPTO, pay a fee, and then wait until the USPTO completes its procedure. Filing an expungement petition would likely be less risky and more cost-effective than a full cancellation proceeding with the Trademark Trial and Appeal Board.
Case study on how trademark reexamination and expungement can be a useful tool in getting approval on your trademark application
In 2018, Gerben Perrott partner Eric Perrott wrote about “Doctored Trademark Specimens at the USPTO.” Since then, the issue has skyrocketed with the unprecedented surge of Chinese applications at the USPTO, causing delays and challenges for USPTO staff, who are tasked with examining these applications. As a result, many fraudulent applications have been registered with false specimens and overbroad goods and services that were never sold or offered in the United States.
Until now, the USPTO had no recourse for “undoing” a mark after it registers. Now, Congress has given the USPTO the ability to “reexamine” trademark registrations under certain special circumstances.
While it will not solve the problem of doctored specimens, the USPTO will at least have some way to address these applications that have been registered within the last five years. For example, the USPTO registered a trademark in 2018 for GALAVAVA for:
“Coverings for existing floors; Floor coverings; Floor coverings made of PVC, rubber, plastic, textiles; Floor coverings of rubber and synthetic rubber; Floor coverings, namely, floor runners; Flooring coverings made of drugget; Anti-slip floor coverings for use on staircases; Carpet tiles; Carpet tiles for covering floors; Carpets, rugs, mats and matting, linoleum for covering existing floors; Cork for use as a floor or wall covering; Decorative slip-resistant floor covering in sheet form; Gymnasium floor coverings; Gymnasium exercise mats; Gymnastic mats; Hard surface coverings for floors; Protective floor coverings; Resilient hard surface covering for floors, walls and other surfaces; Vinyl floor coverings.”
For its specimen, the applicant used the image on the left.
The image on the right is from Getty Images. It appears that the applicant manipulated the stock image of a rug to add a doctored tag onto the specimen, which was then submitted to the USPTO.
Previously, the only remedy would be to file a petition to cancel the mark. A petition to cancel is not only costly to file, but also begins an adversarial process with numerous filings, discovery, and legal costs. A Petition to Cancel is decided in the TTAB, unlike the request to reexamine.
Both the USPTO and third parties can seek reexamination, which would require the applicant to provide additional use (and likely cancel the registration).
Potential concern: Bad faith use or the new proceedings and additional costs for legitimate filers
With many of the USPTO’s attempts to stop fraudulent applications, legitimate applicants will eventually be affected, increasing the time and care needed when filing their trademark applications. Applicants who have a mark that covers broad arrays of goods and services may be more likely to be targeted by these petitions, especially if their products are not clearly sold through obvious channels of trade,
Applicants and their attorneys must ensure that the mark is being used on every product listed in the application and on advertising for every service. As a best practice, applicants should gather specimens for every product and service listed in their application and make sure it is available for later use. When applying for trademark protection and submitting specimens, applicants should also make sure they do not submit a marketing image or an image that has been manipulated in any way. These manipulated images can raise red flags that the applicant may not be using the mark in the ways they are claiming and could make those applicants an easy target for a reexamination or expungement.
Ensuring that your initial trademark application and subsequent proof of use is airtight, may sound stressful, but it doesn’t have to be. Contact Gerben IP today to learn more about our trademark registration services, including drafting of your trademark application.