As of December 27, 2021, new “expungement” and “reexamination” proceedings are available for third parties to request the cancellation of an active U.S. trademark registration that is not being used in connection with some or all of the goods/services set forth in the registration. The purpose of the two new proceedings is to eliminate overly broad and deadwood registrations. Their impact, however, will be felt by all applicants and registrants.
An important development in U.S. trademark practice, these proceedings can be a straightforward, cost-effective means of clearing conflicting registrations without having to resort to more onerous and expensive cancellation proceedings. They also allow registrations to be more easily cancelled in whole or in part, a prospect that is a double-edged sword.
Expungement vs. Reexamination
- Expungement proceedings
- Available against all registrations, i.e., those based on use and those based on foreign registrations
- Considers whether a registered mark has ever been used in commerce on or in connection with some or all of the registered goods/services
- Available between the third and tenth years of registration, however, expungement is available against any registration that is at least three years old, regardless of the 10-year limit, until December 27, 2023
- Reexamination proceedings
- Available only against registrations that are based on use in commerce
- Considers whether the mark was in use in commerce on or in connection with some or all of the goods/services as of the date the application was filed (if based on use), or the later of the date an amendment to allege use was filed or the date that the deadline to file a statement of use expired (if based on intent to use)
- Available during the first five years following the date of registration
What you can do now
There are several steps you can take right now to protect your interests and registrations in light of these new proceedings.
- Be cautious of filing overly broad applications and discuss potential risks related to these new proceedings with your attorney
- Maintain records and documentation of use of your trademarks, from the date of first use to present day, so this information is easily accessible if an expungement or reexamination proceeding is filed (these records will also prove useful for any disputes regarding the use of your mark should any arise)
- Consider auditing your U.S. registrations for extraneous goods/services that are clearly unrelated to your goods/services, and that may make your registrations vulnerable to expungement or reexamination
The rollout of these expungement and reexamination proceedings will most likely not be smooth. We will keep you apprised of any new developments in relevant USPTO practice as things unfold.