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. 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 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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
 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.).
 37 C.F.R. § 2.91(a).
 37 C.F.R. § 2.92(b).
 See 37 C.F.R. §§ 2.91(a), (c)(2).
 37 C.F.R. § 2.91(b)(1).
 37 C.F.R. § 2.91(b)(2).
 37 C.F.R. § 2.91(c)(8).
 37 C.F.R. § 2.91(c)(8).
 See TMEP §§901-901.03 regarding use in commerce.
 37 C.F.R. § 2.91(a)(2)(i)-(ii).
 37 C.F.R. § 2.91(a).