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The USPTO has established ex parte expungement and reexamination proceedings for cancellation of a registration, in whole or in part, when the required use in commerce of the registered mark has not been made.  This is big news, because it creates an entirely new option for trademark applicants whose applications for registration have been refused under Section 2(d), (likelihood of confusion) with a prior registered mark.

As an attorney practicing before the USPTO for over twenty years, I have often been confronted with the situation where my client’s trademark application was refused on grounds of likelihood of confusion with a prior trademark that was registered for a very extensive listing of goods. Upon review, it sometimes appeared that the registered mark was only being used in connection with a few of the many goods for which it was registered, and that the goods the examiner at the USPTO claimed were closely related to my client’s goods, (resulting in the alleged likelihood of confusion) were not among those goods that the registrant appeared to be offering under their registered trademark.

Prior to the implementation of the new expungement and reexamination procedures, the only options in such a situation were to argue there was no likelihood of confusion, approach the owner of the cited registration for a coexistence agreement, or petition to cancel the cited registration in a cancellation proceeding at the Trademark Trial and Appeal Board on grounds of non-use or abandonment. Such a cancellation is notoriously difficult to win, because to prove non-use or abandonment requires very convincing evidence.Moreover, a cancellation proceeding at the trademark Trial and Appeal Board is like a mini litigation and can quickly become expensive.

The proceedings can drag on for years. So, cancellation of the cited registered mark was usually far from an ideal strategy.  Compounding the problem, in many cases, owners of registered marks are not disposed to enter into coexistence agreements. Thus, the only option leftwould be to argue there is no likelihood of confusion with the cited registered trademark and make the best case you could come up with under the circumstances.  But now, with the implementation of the new expungement and reexamination procedures, there is a new strategy that can be undertaken in situation where it appears the cited registration is not in use for the goods that are at the root of the USPTO’s assertion of likelihood of confusion.

Under the new rule, in an expungement proceeding, the USPTO may cancel a registration if the evidence shows that the registered mark has never been used in commerce on or in connection with some or all of the goods and/or services recited in the registration. (“Trademark Examination Guide 1-21”) In a reexamination proceeding, the USPTO may cancel a registration if the evidence of record shows that the registered mark was not in use in commerce on or in connection with some or all of the goods and/or services as of the filing date of the application or amendment to allege use, or before the deadline for filing a statement of use.

A petition for expungement may be filed against any trademark registration, as long as it is filed within the allowable time period. A petition for reexamination may only be filed against registrations that have a basis of use in commerce.

The filing deadlines for petitions for expungement or reexamination are as follows: A petitioner may request an ex parte expungement proceeding in connection with a registration at any time between 3 and 10 years after the date of registration.  Moreover, until December 27, 2023, a petitioner may request an expungement proceeding for a registration that is at least 3 years old, regardless of the 10- year limit.  A petitioner may request a reexamination proceeding during the first five years following the date of registration.

A petition for expungement must allege that the mark has never been used in commerce on or in connection with some or all of the goods and/or services recited in the registration. (Trademark Examination Guide 1-21) A petition for reexamination must allege that the trademark was not in use in commerce on or in connection with some or all of the goods and/or services recited in the registration on or before the relevant date (such date being either the filing date of the application, or the latter of the date of the filing of the allegation of use, or the deadline for the filing of the statement of use, depending on circumstances).

A petitioner must demonstrate that a bona fide attempt has been made to determine if the relevant registered mark was never used in commerce (for expungement petitions) or was not in use in commerce as of the relevant date (for reexamination petitions) on or in connection with the goods and/or services identified in the petition by conducting a reasonable investigation.  What counts as a reasonable investigation will vary depending on the circumstances.

Bottom line: This is a new rule instituted by the USPTO allowing for third parties to petition to have registrations cancelled in whole or in part based on non-use of the mark in connection with the registered goods or services. The petitioner files the petition and is done. If the USPTO grants the petition the registrant will be put to the task of proving its registered mark has been in use in connection with the relevant goods and services.  Thus, expungement and reexaminations proceedings are much simpler and less costly than cancellation proceedings.

Bottom line:

This is a new rule instituted by the USPTO allowing for third parties to petition to have registrations cancelled in whole or in part based on non-use of the mark in connection with the registered goods or services. The petitioner files the petition and is done. If the USPTO grants the petition the registrant will be put to the task of proving its registered mark has been in use in connection with the relevant goods and services.  Thus, expungement and reexaminations proceedings are much simpler and less costly than cancellation proceedings.

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About Thomas Wilentz, Trademark Lawyer

Thomas M. Wilentz is a published writer on intellectual property law who has been practicing trademark law for 18 years. His firm, Thomas M. Wilentz Attorney at Law, PLLC, was founded in 2003 and since then has helped clients from all over the USA, as well as from Canada, China, the UK, Australia, Malaysia, Mexico, Singapore and many other countries.