Ten Facts about the USPTO’s New Expungement and Reexamination Proceedings

Orrick, Herrington & Sutcliffe LLP

Background

As 2021 drew to a close, the United States Patent and Trademark Office (USPTO) introduced two new procedures pursuant to the Trademark Modernization Act of 2020 (the “Act”), providing new, streamlined avenues to seek cancellation of trademarks that are not, or have not at key times, been in actual use.[1] An expungement proceeding applies where a registered mark has never been used in commerce in connection with some or all of the goods and services recited in the registration. A reexamination proceeding is available when a registered trademark was not in use in commerce in connection with some or all of the goods and services as of the filing date of the underlying application (in the case of a use-based application) or statement of use (in the case of an intent-to-use application). The Act also formalized a new claim for inter partes cancellation proceedings that the mark has never been in use[2] but our Alert focuses only on the expungement and reexamination proceedings, which are entirely new types of proceedings.

These new procedures were introduced as part of the USPTO’s struggle to address an unprecedented wave of tens of thousands of applications with dubious use claims filed in the past two years. These filings have dramatically slowed processing times at the USPTO and increased the costs of clearance and registration of new marks. Expungement and reexamination proceedings are new tools to clear “deadwood” from the trademark register in a manner that is faster, simpler and less expensive than traditional opposition and cancellation proceedings.

Here are 10 key facts you need to know about the new procedures and some practical tips on how to employ them to help protect your trademark portfolios and brands.

How are expungement and reexamination proceedings instituted?

  1. These proceedings are instituted in two ways: (1) any person may file a petition requesting an expungement or reexamination proceeding;[3] or (2) the Director of the USPTO may institute a proceeding on the Office’s own initiative.[4] Petitions are filed electronically and require a filing fee of $400 per class.

Practical Tip: The “any person” language means there is virtually no standing requirement to file one of these proceedings. This makes it possible for legitimate brand owners to target a suspect mark that may be blocking a proposed mark.

Is there concern that these procedures can be abused by bad actors?

  1. Yes, but the proceedings are designed to provide just one bite at the apple. Expungement and reexamination proceedings cannot be combined into one petition, and only one registration can be specified per petition.[5]Once a proceeding is instituted, no other proceedings will be accepted for that registration’s same goods and/or services—including an inter partes cancellation proceeding.And if a proceeding is decided in the registrant’s favor, no further expungement petitions will be permitted against the registration and goods at issue.

Practical Tip: The relative simplicity of these proceedings should not be taken as a signal that they can be filed indiscriminately. Thoughtful consideration must be given to the likelihood of success and long-term implications of a loss.

Practical Tip: While expungement proceedings are not permitted against the same goods/services more than once, subsequent reexamination proceedings may be permitted because a registrant could defend an expungement petition by showing use of the mark post-filing, but still be vulnerable to reexamination if there was no use at the time of filing.

Will there be a vetting process to weed out meritless filings?

  1. Yes. If a third party files a petition, the Director decides whether the evidence in the petition supports instituting an expungement or reexamination proceeding. The Director’s decision is final and non-reviewable. A petition must make out a prima facie case of nonuse and must be supported by evidence, not mere allegations.

Practical Tip: Petitioners should file robust and thoughtful petitions supported by persuasive extrinsic evidence. It remains to be seen how strictly the Director’s office will review these petitions, but the final nature of the Director’s initial decision—and the fact that petitioners do not have an opportunity to submit additional evidence later on—means that petitioners can take no chances on not putting in their best case at the outset.

Practical Tip: Petitions will be publicly available on the USPTO’s online systems. Petitioners should carefully consider that context while drafting submissions.

When can one of these petitions be filed?

  1. Petitioners may request an expungement proceeding any time between three and ten years after a trademark is registered.[6]Reexamination proceedings, on the other hand, can be requested anytime within the first five years after a trademark is registered.[7]

Practical Tip: As part of the phase-in of these new proceedings, the ten-year limit on expungement proceedings does not go into effect until December 27, 2023; thus, for the first two years, petitioners can pursue a claim against any registration that is more than three years old. Owners of large and older trademark portfolios need to understand that virtually all of their older registrations will be vulnerable to such a filing during this introductory period.

What must a petitioner include in a petition for expungement or reexamination?

  1. Each petition must include the applicable allegation of nonuse: for an expungement proceeding, a petition must prove the mark has never been used in commerce and, for a reexamination proceeding, that the mark was not used in commerce at the time the application for registration (or allegation of use) was filed. Petitioners must demonstrate they have made a bona fide attempt to establish that the mark was not used in commerce and include a verified statement that the petitioner conducted a “reasonable investigation” into the nonuse of the trademark.[8] Petitioners must specify the elements of their reasonable investigation for each source of information they rely upon and must describe the sources searched, how and when the search was conducted, and what information and evidence the searches produced.[9]

Practical Tip: Petitioners are given the difficult task of proving a negative, and it is expected that making out a prima facie case may not be as easy as proponents of the law had hoped. What constitutes a “reasonable investigation” remains to be seen and will be determined on a case-by-case basis, but petitioners should always conduct (and describe in the petition) a search within the relevant marketplace, keeping in mind the scope and trade channels of use of the relevant goods and services.

Practical Tip: Given the nature of nonuse claims, some particularly helpful sources might include the Wayback Machine®, state and federal trademark records, and the registrant’s websites or other places where the goods and/or services might be advertised or offered for sale. We think it’s likely that trademark search and investigation vendors will develop packaged services designed to support these petitions.

How do you respond to a petition for expungement or reexamination?

  1. If the Director believes that a prima facie case has been made, the proceeding will be formally instituted; the USPTO will issue an Office Action to the registrant and the registrant then has three months to respond. The response deadline can be extended by one month for a small fee.

Practical Tip: Registrants should always keep their USPTO correspondence information up to date—including attorney representation information—to ensure that institution notices (particularly with reference to older registrations) are not misdirected and missed.

  1. To counter the petitioner’s or Director’s claims of nonuse, registrants may submit testimonial evidence in the form of a sworn declaration in response to the Office Action, but this should be supported by corroborating documentary evidence such as specimens of use.[10]

    1. For reexamination proceedings, the registrant’s evidence of use must demonstrate use of the registered mark in commerce on or in connection with the goods and/or services at issue on or before the date the application (for use-based applications) or allegation of use was filed or the expiration of the deadline for filing a statement of use (for intent-to-use applications).[11]
    2. For expungement proceedings, the burden on the registrant is a little easier: the registrant must introduce evidence that the mark was in use at any time before the filing date of the petition to expunge. [12]

Practical Tip: Since the Director already considered the registration file when deciding to institute the proceeding, resubmitting the same specimens of use without any additional supporting evidence will likely be insufficient to rebut the prima facie case of nonuse.

  1. A registrant may also respond to an expungement or reexamination proceeding by submitting a response that deletes some or all of the goods and/or services at issue in the proceeding, or surrenders the entire registration.

Practical Tip: Attorneys and other individuals reviewing trademark clearance reports should consider the availability of a potential expungement or reexamination proceeding against a blocking mark and the likely outcome. Such availability could lead to a quick negotiation with a reasonable registrant that entails deletion of goods and services that are unimportant to the registrant (because the mark is not being used in connection with them). This possibility may change the trademark availability analysis and/or business risk.

  1. If the registrant fails to establish use of the mark in commerce at the relevant time (or to sufficiently establish excusable nonuse, if applicable) for all of the goods and/or services at issue, the USPTO will issue a Final Action. Once a Final Action issues, the registrant has three months to file a request for reconsideration or an appeal to the Trademark Trial and Appeal Board (TTAB). This deadline is not extendable. If no review is sought, the USPTO will issue a notice of termination, which notifies the public of the outcome of the proceeding, and if a notice of termination issues and indicates that some or all of the goods and/or services will be cancelled, the USPTO will then cancel the registration, in whole or in part, accordingly.

Practical Tip: If a registrant’s failure to respond to an Office Action in an expungement or reexamination proceeding is due to an extraordinary situation, the registrant may petition to rescind the cancellation of their registration no later than two months after the date of actual knowledge of the cancellation—and no later than six months post-cancellation.

How can these proceedings benefit you?

  1. We expect that these proceedings will most often be of use when a client’s application is issued a refusal based on the likelihood of confusion with a prior registration for a mark that may not be in use. If the registration falls in the relevant time frames, the applicant will now have the option to file an expungement/reexamination petition against the cited mark (as is appropriate) and seek suspension of its own application pending the outcome of the proceedings. If the petition is successful, the blocking registration is eliminated (or narrowed) and the client’s application can proceed.

Practical Tip: Consider an expungement/reexamination petition as a strategy in responding to 2(d) refusals. If the proceeding is not instituted, another Office Action will issue allowing for argument. An expungement/reexamination petition may be a particularly enticing option if arguing against likelihood of confusion on the public record is not in the applicant’s best interest.

What about the risks?

Practical Tip: Particularly during the initial phase-in period where the ten-year limitation does not apply, owners of older registrations that may no longer reflect current use of their marks may find themselves vulnerable to these petitions. This provides further incentive to do periodic reviews of one’s trademark portfolio to ensure that registrations reflect the actual goods and services being offered in the marketplace.


[1] https://www.govinfo.gov/content/pkg/FR-2021-11-17/pdf/2021-24926.pdf?utm_source=federalregister.gov&utm_medium=email&utm_campaign=subscription+mailing+list; Pub. L. No. 116-260, Div. Q, Tit. II, Subtit. B, §§ 221-228 (Dec. 27, 2020) (to be codified in scattered sections of 15 U.S.C.).

[3] 37 C.F.R. § 2.91(a).

[4] 37 C.F.R. § 2.92(b).

[5] See 37 C.F.R. §§ 2.91(a), (c)(2).

[6] 37 C.F.R. § 2.91(b)(1).

[7] 37 C.F.R. § 2.91(b)(2).

[8] 37 C.F.R. § 2.91(c)(8).

[9] 37 C.F.R. § 2.91(c)(8).

[10] See TMEP §§901-901.03 regarding use in commerce.

[11] 37 C.F.R. § 2.91(a)(2)(i)-(ii).

[12] 37 C.F.R. § 2.91(a).

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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