But will expungement or reexamination always be the best strategy for challenging a trademark registration?

In our last post on ex parte expungement and reexamination proceedings here, we explained the timing and basics of these new proceedings.  The following illustrates what happens after these proceedings are initiated, as contemplated by the USPTO’s proposed rules:

1. The USPTO reviews the petition and decides whether to institute a proceeding.
2. If a proceeding is initiated, the USPTO issues an Office action, requiring the owner of the registration to file evidence of use of its mark, or evidence of use of its mark before a certain date.  If accurate, owners of Madrid Protocol and Paris Convention registrations may instead respond by claiming that their marks were not in use during the relevant time period due to special circumstances.  The registrant must respond to the Office action within two months.
3. If the registrant’s response shows sufficient use of the mark (or non-use because of special circumstances), the proceeding is terminated, and the registration remains in force.  In contrast, if the registrant fails to respond, then the registration is cancelled in whole or in part, according to the petition.
4. If the registrant’s response does not demonstrate enough use of the mark (or excusable non-use) to rebut the claims in the petition, then the USPTO will issue a final Office action, giving the registrant two months to file a request for reconsideration and/or an appeal to the Trademark Trial and Appeal Board.
5. As before, if the registrant presents sufficient evidence, then the proceeding is terminated, and the registration remains in force.  If the registrant does not timely respond, then the registration is cancelled in whole or in part.  If the registrant’s response is again unacceptable, but the registrant has also filed a notice of appeal within the two-month response period, then the appeal will resume.

The ex parte expungement and reexamination proceedings are touted as faster and more efficient vehicles than cancellation proceedings; much of the onus is on the brand owner to come forward with evidence of use after the proceeding is initiated.

But before getting to Step #1, a petitioner requesting institution of an expungement or reexamination proceeding must conduct a “reasonable investigation” and present a prima facie case that the mark was never used in commerce (for expungement) or was not in use in commerce at the relevant time (for reexamination).  The petition must include a verified statement describing the elements of the petitioner’s “reasonable investigation,” identifying the sources searched, how and when the searches were conducted, and what information and evidence, if any, the searches produced.  What constitutes a “reasonable investigation” will vary, but the USPTO’s notice of proposed rulemaking observes that a single internet search probably will not suffice.  A petitioner may look to various sources to satisfy its reasonable investigation requirement, including state and federal trademark records, internet websites and other online media owned or controlled by the registrant, third-party print sources and webpages, records of filings made with governmental agencies, the registrant’s marketplace activities, and records of litigation or administrative proceedings.

The “reasonable investigation” requirement strikes us as a potentially heavy lift for petitioners, particularly in light of the chance of obtaining a default judgment in a traditional cancellation proceeding.  In fact, a recent USPTO pilot program that measured and assessed the rate of default judgment for cancellation proceedings found an overall 44% default judgment rate across all proceedings.  The rate was even higher for cancellation proceedings alleging a nonuse or abandonment claim; 49% for cancellation proceedings including a nonuse or abandonment claim, and 60% for cancellation proceedings alleging only a claim of abandonment.¹

The Trademark Modernization Act includes a new ground for cancellation that allows a petitioner to allege at any time after the first three years from the registration date that a mark has never been used in commerce.  This new ground for cancellation is similar to the allegation in an ex parte expungement proceeding, but a petition to cancel need only allege a plausible claim of non-use,² as opposed to presenting evidence sufficient to set out a prima facie case of non-use.  Thus, where a preliminary investigation suggests that a mark has never been used in commerce, might a cancellation proceeding be the less expensive and more efficient route?

[1] https://www.uspto.gov/trademarks/ttab/expedited-cancellation-pilot-program.

[2] See TBMP § 503.02 (stating complaint must “state a claim that is plausible on its face”).