The Nuts and Bolts of Expungement and Reexamination
You may remember our blog post here, discussing the Trademark Modernization Act of 2020, which became law at the end of last year. To implement the Trademark Modernization Act, the United States Patent and Trademark Office (USPTO) has proposed changes to the trademark rules of practice, which we begin to explore in the following post. Over the coming weeks and months, stay tuned for further commentary, insights and practice tips on these proposed changes!
According to Commissioner for Trademarks David Gooder, during a recent USPTO virtual roundtable event, “protecting the integrity of the US trademark register is, and will remain for some time, one of our top priorities.” Keeping the register clear of improperly obtained trademark registrations helps ensure that legitimate businesses can register their marks with the USPTO, and enforce those rights against infringers.
In an effort to combat “cluttering” of the trademark register, the USPTO has proposed new procedures allowing any party, or the Director, to challenge registered trademarks that may not be in use, or were not in use when certain filings were made.
The Trademark Modernization Act provides a new process for ex parte expungement of trademark registrations. In an expungement proceeding, anyone can ask the USPTO to expunge a registration if the trademark has never been used in US commerce. This process is intended to target, by way of example, Madrid Protocol and Paris Convention applications that have matured to registration in the USA. The Trademark Modernization Act also introduces an ex parte reexamination proceeding. Here, one may petition the USPTO to determine whether a registered mark was in use by a certain date, such as when an application was filed, or when a mark owner filed evidence of use of its mark. Reexamination proceedings are aimed at cancelling registrations that the USPTO granted based on false and inaccurate statements from mark owners.
In view of these new proceedings, what’s the lesson for trademark owners? One takeaway is to regularly audit your trademark portfolio. If you notice that you’re no longer using a given mark on all the claimed products or services, consider proactively deleting these items from your registration now – there’s no fee for voluntary deletions of goods and/or services made outside the context of post-registration affidavit of use filings. Doing so could save you the effort and expense of defending against an expungement or reexamination proceeding initiated by a competitor. It’s also a good idea to consistently save and document evidence of use of your marks. This way, if a third party or the USPTO initiates an expungement or reexamination proceeding, you’ll be able to quickly compile and submit the evidence needed to protect your trademark rights.
In case you’re visual learners like us, the following chart sets out the most significant similarities and differences between the expungement and reexamination proceedings contemplated by the proposed rules.
| Expungement | Reexamination | |
|---|---|---|
| Time for Filing | Until December 27, 2023, at any time after 3 years of registration
After December 27, 2023, 3-10 years after registration |
First 5 years after registration |
| Petition Fee | $600/class | $600/class |
| Basis of Proceeding | Mark has never been used in commerce on or in connection with some or all of the goods and/or services | Mark was not in use in commerce on or in connection with some or all of the goods and/or services as of:
|
| Petition Requirements | Made in writing and includes:
|
Same as expungement |
| Evidentiary Standard | Reasonable investigation | Reasonable investigation |
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