This time last year, we introduced a series of blog posts in which we provided an overview of the new ex parte examination and expungement proceedings introduced by the Trademark Modernization Act (“TMA”) and pondered a question sure to be on the minds of many a practitioner – will these proceedings truly be a faster and more efficient vehicle for removing improper trademark registrations from the registrar? While the answer to this question is yet to be seen, the first six months of proceedings have provided some insights to consider when assessing whether an expungement or reexamination proceeding is the right option for you.
In the six months since the United States Patent and Trademark Office (“USPTO”) received its first petition for expungement, just over a hundred expungement and reexamination proceedings have been filed.1 Thus far, the USPTO has issued its decision on whether to institute a proceeding within two to three months of receiving the petition, and the registrant is given three months (with the option for a one-month extension) in which to respond. Thus, where the registrant does not respond, a registration may be cancelled anywhere from five to seven months after the petition is submitted, assuming the USPTO acts promptly to cancel the trademark registration upon receiving no response from the registrant.
This timing appears to be more or less consistent with that of obtaining a default judgment in a cancellation proceeding initiated before the Trademark Trial and Appeal Board, which typically takes anywhere from four to six months, depending on how promptly the TTAB acts in issuing a default judgment.2
Don’t Forget the Index
While we’re on the subject of timing, parties that decide to pursue an ex parte petition should take care not to forget the index. Many a petitioner has overlooked the requirement that a complete itemized index of all evidence referenced in the petition must be submitted with every petition for reexamination or expungement, resulting in the USPTO issuing a petition inquiry letter asking the petitioner to correct the defect within 30 days. Although not fatal to a petition, failing to adhere to the procedural requirements unnecessarily delays resolution of the proceedings and creates more work for the petitioner and the USPTO.
High Evidentiary Burden
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). In practice, it appears that the “reasonable investigation” requirement has turned out to be a heavy lift for petitioners. Of the petitions considered thus far, the USPTO has declined to institute proceedings in response to roughly 40 percent of petitions for expungement and 30 percent of the petitions for reexamination, finding that the petitions did not establish a “reasonable predicate” supporting a conclusion of non-use. While the USPTO has found petitions lacking for a number of reasons, common pitfalls include submitting evidence indicative of only a lack of current use or providing evidence of non-use from only a few select sources when the registrant’s goods and/or services are offered through multiple websites or channels of trade.
On the other hand, successful petitions often include evidence from archival sources, such as the Wayback Machine, that tend to show non-use of the mark over a period of time in proximity to the relevant use date. Additionally, careful scrutiny of the specimen submitted by the registrant has proven fruitful, as the USPTO has instituted multiple proceedings where the petitioner submitted evidence that the specimen submitted by the registrant appears elsewhere on the web as a stock image or is used by a third party.
Taking both timing and burden into consideration, a party seeking to cancel a registration may be better off filing a petition to cancel, which is likely considerably less time intensive and less costly than the “reasonable investigation,” required by the expungement and reexamination proceedings, in the hopes of obtaining a quick and cost-effective default judgment.
Stay tuned for more insights!
 For those unfamiliar with TTAB proceedings, the TTAB is quick to institute a cancellation proceeding upon receipt of a petition and sets a deadline for the registrant to respond to the petition. If the registrant does not submit an answer or motion by the deadline, the Board issues a Notice of Default, giving the registrant thirty days to show cause why default should not be entered against it. If no answer is received, the Board will sustain the proceeding and cancel the registration.