The United States Patent and Trademark Office (USPTO) has introduced two important proceedings, expungement and reexamination, which offer new methods for challenging trademark registrations. These proceedings help ensure the accuracy of the USPTO register by addressing issues of non-use and non-compliance with the requirements for maintaining a trademark. In this article, we will provide an in-depth look at these processes, their relevance to businesses, and how to effectively navigate them.
Expungement: Removing Trademarks for Non-Use
The Expungement Proceeding is a tool used to challenge trademarks that have either never been used in commerce or have been used only for some of the goods or services listed in the registration. This procedure aims to remove “deadwood” trademarks from the USPTO register, keeping it clean and ensuring that only trademarks in active use remain registered.
To initiate an expungement, a Petition to the Director must be filed through the USPTO’s Trademark Electronic Application System (TEAS). In the petition, the filer requests the cancellation of the trademark either in full or for the specific goods or services that are not being used in commerce.
Expungement proceedings can be initiated from three years after the trademark’s registration until 10 years post-registration. However, there is a special window during which the 10-year limit is waived, allowing filings even after this period, as long as the petition is filed before December 27, 2023. After this date, the usual 10-year filing window will be in place again.
It’s important to note that expungement is applicable to trademarks registered under Sections 1, 44, or 66 of the Trademark Act. This provides a powerful tool for businesses to challenge and clean up the register by removing unused marks that could otherwise cause confusion or mislead the public.
Reexamination: Addressing Non-Use on Specific Goods or Services
The Reexamination Proceeding is a separate process that focuses on trademarks that were once used in commerce but are no longer actively in use for some or all of the listed goods or services. This proceeding ensures that trademarks which are no longer being used, or were never used as claimed, are appropriately removed from the register.
The reexamination process is based on the premise that if a trademark was not in use by a certain date, it may no longer meet the requirements for federal registration. The relevant date for assessing non-use depends on whether the trademark application was filed based on actual use or intent to use the mark in commerce.
For applications filed on use in commerce, the mark must have been in use with all of the goods or services by the application’s filing date. For applications based on intent-to-use, the relevant date becomes either the date of the Allegation of Use or the deadline for filing the Statement of Use, whichever comes later.
Reexamination proceedings are only available within five years after the trademark’s registration date and apply only to registrations filed under Section 1 of the Trademark Act. This limits their scope but provides a method for ensuring that only marks that are truly in use remain on the register.
Filing a Petition: The Key Elements
The first step in both expungement and reexamination proceedings is filing a Petition to the Director. The petitioner is required to provide specific information, including the Registration Number of the trademark and the reasons for the request to cancel the trademark.
There are two primary grounds on which a petition can be filed:
- Non-Use of the Trademark: The trademark has not been used in commerce for some or all of the goods/services covered by the registration.
- Non-Use at the Relevant Date: The trademark was not in use for some or all of the goods/services on or before the specified relevant date.
The petitioner must not only present the grounds for cancellation but also provide sufficient evidence to support their claims. This evidence is crucial to establishing a case for expungement or reexamination.
Conducting a Thorough Investigation: The “Reasonable Investigation” Requirement
A crucial component of both proceedings is the requirement for petitioners to conduct a reasonable investigation to find evidence of non-use. This investigation serves to build the case for canceling the trademark by showing that the mark is not being used in commerce as claimed.
What constitutes a reasonable investigation can vary depending on the type of goods or services and the particular circumstances of the trademark. Generally, a reasonable investigation includes a search across multiple sources of information to uncover whether the mark is in use or if evidence points to its non-use. The investigation may involve the following methods:
- Historical Evidence: This can include archived web pages (such as those found on the Wayback Machine®) or records from previous business activities.
- Trademark Databases: State and federal trademark databases can provide insight into whether the mark is used in commerce.
- Online Research: Searching the registrant’s website or other platforms they control can provide useful evidence of non-use.
- Industry-Specific Websites and Social Media: Researching industry-specific sites and social media platforms can help verify whether the trademark is in use.
- Unsuccessful Purchases: Evidence that attempts to purchase goods or services bearing the trademark were unsuccessful can serve as additional proof of non-use.
Each source of evidence must be carefully documented, and the petitioner must provide detailed explanations of the searches or investigations conducted. The findings from these investigations must be included in the petition as Exhibits, with copies of relevant documents or web pages attached.
Establishing a Prima Facie Case for Non-Use
To succeed in either expungement or reexamination, the petitioner must present a prima facie case of non-use. This means providing enough convincing evidence to suggest that the trademark is not being used in commerce. The burden then shifts to the registrant, who has the opportunity to present evidence that the trademark is indeed in use.
If the petitioner’s evidence is strong enough to establish a prima facie case, the trademark holder will need to rebut it by showing that the mark is being used. If the registrant cannot successfully provide such evidence, the trademark may be canceled for the relevant goods or services.
If the petition succeeds, the USPTO will issue a Notice of Termination, which results in the cancellation of the trademark for the goods or services that are not in use. The petitioner will generally not be involved in further proceedings after the petition is instituted.
The Final Outcome: Implications of Expungement and Reexamination
The introduction of expungement and reexamination proceedings provides important mechanisms for ensuring the integrity of the USPTO register. These proceedings help eliminate trademarks that are not in use, ensuring that the public can rely on the accuracy of the trademark register when searching for marks.
For businesses and trademark holders, these proceedings represent new risks and opportunities. It’s important to be proactive and ensure that all trademarks are in use and properly maintained to avoid challenges through expungement or reexamination.
If you’re considering filing an expungement or reexamination petition or if you need advice on how to defend your trademark against such proceedings, it’s advisable to consult with a trademark attorney. A qualified attorney can guide you through the process, ensure that all evidence is properly collected, and help you present the strongest possible case.
Conclusion: Protecting Trademark Integrity
The new expungement and reexamination proceedings introduced by the USPTO offer businesses powerful tools to challenge trademarks that are not in use or no longer meet the requirements for registration. By understanding the filing process and ensuring that trademarks are actively used, trademark owners can protect the value of their intellectual property and avoid potential disputes.
If you have questions about these proceedings or need assistance with a trademark matter, contact one of our Trademark Lawyers to learn more about how we can help protect your brand.