Trademark Expungement and Trademark Re-examination at the USPTO

With over 2,750,000 registered trademarks in the US, some of them contain goods and services that have never been sold in the country. However, previously, the USPTO allowed such registrations without requiring information about the applicant’s sales. Now, with the introduction of the Trademark Modernization Act, third parties can formally petition to expunge such goods and services that should never have been registered in the first place, and request reexamination of trademark registrations. The best part is that once initiated, the petitioner doesn’t need to participate further, as the USPTO takes over the process.

These new procedures commence on December 18, 2021, and the guide provides all the necessary information for brand owners, attorneys, and trademark applicants.

Why is the USPTO Offering Trademark Expungement and Trademark Reexamination Proceedings?

The USPTO is offering trademark expungement and trademark reexamination proceedings to improve the accuracy and integrity of the federal trademark registration system in the United States. These procedures were introduced as part of the Trademark Modernization Act, which was signed into law on December 27, 2020.

The USPTO recognizes that the current registration system allows some trademarks to be registered without proper examination or evidence of use in commerce. This can result in the registration of trademarks that should not have been granted in the first place, causing confusion for consumers and harm to legitimate trademark owners.

Trademark expungement and trademark reexamination proceedings provide an avenue for third parties to challenge the validity of registered trademarks and ensure that only valid and enforceable trademarks remain on the federal register. By allowing third-party challenges to trademarks, the USPTO aims to promote fairness, accuracy, and transparency in the federal trademark registration process.

Additionally, these proceedings give the USPTO the ability to proactively remove registrations for goods and services that are not being used in commerce, which can help reduce the clutter on the federal trademark register and make it easier for businesses to find and register their own trademarks.

How Trademark Expungement and Reexamination Procedures Work?

Trademark expungement and reexamination procedures are legal processes available at the USPTO for challenging the validity of a registered trademark. Here is how they work:

Trademark Expungement:

Any person can file a petition for trademark expungement with the USPTO, challenging the validity of a registered trademark.
The petitioner must provide evidence to support their claim, such as evidence of prior use of a similar mark or evidence that the registered mark was fraudulently obtained.
If the USPTO determines that the registered trademark should not have been granted, they will issue an order to expunge the trademark from the federal register.
The trademark owner has the right to appeal the decision to the Trademark Trial and Appeal Board (TTAB) within 30 days.

Trademark Reexamination:

Any person can file a petition for trademark reexamination with the USPTO, requesting that the USPTO reexamine the validity of a registered trademark.
The petitioner must provide new evidence or arguments to support their claim, such as evidence of new prior use or evidence that the registered mark has become generic.
The USPTO will review the petition and any evidence provided and determine whether to initiate a reexamination proceeding.
If the USPTO determines that the registered trademark is invalid, they will issue an order canceling the registration.
The trademark owner has the right to appeal the decision to the TTAB within 30 days.

Should you choose an “expungement” or “reexamination” proceeding?

Whether to choose a trademark expungement or reexamination proceeding depends on the specific circumstances of the case. Here are some factors to consider when deciding which type of proceeding to pursue:

Trademark Expungement:

Trademark expungement is appropriate when the registered trademark should never have been granted in the first place, such as when the mark is confusingly similar to an existing mark or the registration was obtained fraudulently.
Expungement can be a faster and more efficient process than reexamination, as it focuses on the original registration of the mark rather than a new examination of the mark’s current use in commerce.
However, expungement proceedings may require stronger evidence than reexamination proceedings, as the petitioner must prove that the mark should never have been registered in the first place.

Trademark Reexamination:

Trademark reexamination is appropriate when there is new evidence or arguments that were not considered during the original examination of the mark, such as evidence of new prior use or a change in the mark’s generic status.
Reexamination can be a longer process than expungement, as it requires a new examination of the mark’s current use in commerce.
However, reexamination proceedings may require less evidence than expungement proceedings, as the petitioner only needs to show that the new evidence or arguments raise a substantial new question of patentability.

Ultimately, the decision to pursue a trademark expungement or reexamination proceeding should be based on a careful analysis of the facts and legal arguments in the case, and it is highly recommended to seek the guidance of a qualified attorney before making any decisions.

When can you file an expungement or reexamination proceeding?

Trademark expungement and reexamination proceedings can be filed at the USPTO under certain circumstances. Here are the eligibility requirements for each proceeding:

Trademark Expungement:

Any person who believes that a registered trademark should not have been granted can file a petition for expungement with the USPTO.
The petition must be filed within five years of the registration date of the trademark, or at any time if the registration was obtained fraudulently.

Trademark Reexamination:

Any person can file a petition for reexamination with the USPTO, requesting that the USPTO reexamine the validity of a registered trademark.
The petition must include new evidence or arguments that were not considered during the original examination of the trademark, and the evidence must raise a substantial new question of patentability.
The petition can be filed at any time during the life of the trademark registration.

It is important to note that both trademark expungement and reexamination proceedings can be complex legal processes, and it is highly recommended to seek the assistance of a qualified attorney before initiating or responding to such proceedings. Additionally, there may be other legal and factual considerations that could impact the eligibility of a particular proceeding in a specific case.

How do you meet the requirement to conduct a “reasonable investigation” in your proceeding?

In order to meet the requirement of conducting a “reasonable investigation” in a trademark expungement or reexamination proceeding, you should gather and present evidence that supports your position in the case. This evidence should be relevant, reliable, and admissible in court, and it should help to prove or disprove the issues in dispute.

Here are some steps you can take to conduct a reasonable investigation in your proceeding:

Conduct research: You should conduct research on the trademark in question and its owner to gather the information that could help your case. This could include reviewing public records, conducting online searches, and interviewing witnesses.
Gather evidence: You should collect evidence that supports your position in the case. This could include documents, photographs, videos, and other types of physical evidence that help to prove or disprove the issues in dispute.
Review the evidence: Once you have gathered evidence, you should review it carefully to ensure that it is reliable, relevant, and admissible in court.
Present the evidence: You should present the evidence in a clear and organized manner that helps to support your case. This may involve creating exhibits, preparing witness statements, and developing a persuasive argument.

It is important to note that conducting a reasonable investigation in a trademark expungement or reexamination proceeding can be a complex and time-consuming process. It is highly recommended to seek the assistance of a qualified attorney with experience in these types of proceedings to help you conduct a thorough and effective investigation.

How do you establish a prima facie case of “relevant nonuse”?

The USPTO will commence an expungement or reexamination proceeding solely for the goods or services for which there is a prima facie case of relevant nonuse. The evidence obtained through the petitioner’s reasonable investigation will determine whether a prima facie case has been established. However, for the evidence to be admissible, it must give adequate notice of the alleged nonuse to enable the registrant to dispute the claim with competent evidence.

Concluding…

The new expungement and reexamination procedures introduced by the USPTO under the Trademark Modernization Act offer an opportunity for brand owners, attorneys, and trademark applicants to challenge trademark registrations that should not have been granted in the first place. By conducting a reasonable investigation and establishing a prima facie case of relevant nonuse, petitioners can initiate these proceedings to challenge registrations that may cause confusion in the marketplace. The USPTO’s streamlined process means that once the proceeding is initiated, the petitioner does not need to participate, allowing the USPTO to take charge of the case. These new procedures are a significant development in trademark law and can help ensure that trademarks registered in the USPTO are only for goods and services that have been used in commerce.