Alt Legal Connect Session SummaryThe Ex-Filings: Expungements and ReExaminations Explained
Alt Legal Team | February 07, 2023
On Monday, February 6, Tamara Rabenold, IP investigator & CEO of Vaudra International, moderated a panel discussion with trademark attorneys Britt Anderson of Perkins Coie, Charis Dorsey of The Dorsey Firm, and Eric Perrott of Gerben Perrott, “The Ex-Filings: Expungements and ReExaminations Explained.” The panel explained how and when to file the new Trademark Modernization Act expungement and reexamination proceedings, discussed what a reasonable investigation involves, and provided tips and strategies to consider based on examples of initiated and rejected proceedings.
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Background – New Non-Use Proceedings
Britt began with describing the new expungement and reexamination proceedings created by the Trademark Modernization Act. Expungement proceedings apply when a mark has never been used on some or all of the goods or services and apply to Section 1, 44, and 66 registrations. These proceedings can be brought anytime between 3-10 years after registration (and as an exception, anytime after 3 years following registration through December 2023.) Reexamination proceedings apply when a mark was not in use as of relevant date on some or all of the goods or services as of: Section 1(a) filing date or Section 1(b), later of date of Amendment to Allege Use or expiration of time to file SOU. Reexamination proceeding may be brought anytime between 1-5 years post registration.
Britt described the technical filing requirements and the USPTO procedures once an expungement or reexamination proceeding is filed.
Britt noted that there is no requirement to identify a particular trademark owner or claimant, the proceedings can be filed in the name of a law firm. Britt said it’s important to remember that these are not adversarial proceedings.
Next, Britt described the components of building a prima facie case – past nonuse evidence, current nonuse evidence, improper/fraudulent specimens, documentary evidence of fraud, and web/search results (even if negative.) Also, Britt noted that a prima facie case must be made with reference to each good/service that you are targeting.
Once a petition is submitted, the examiner has discretion whether or not to institute the proceeding. The examiner may issue a 30-day letter for clarification, however no supplemental evidence may be submitted in response.
When a registrant responds to an expungement petition, they may produce evidence of use before the filing date of the petition, a verified statement of excusable nonuse, or they may delete some or all goods/services. A registrant may respond to a reexamination petition by producing evidence of use before the relevant date or they may delete some or all goods/services. If a registrant has produced evidence of use, the case ends and is terminated. Britt noted that once a proceeding has been terminated after a registrant has demonstrated use, estopel applies and there can be no further action on the same goods/services. Additionally, while a proceeding is pending, no other proceedings can be brought regarding the same goods/services.
Britt also noted that expungement and reexamination proceedings may be suspended for pending civil or TTAB proceedings. Additionally, examination of other applications may be suspended pending disposition of an expungement or reexamination proceeding.
The TMA’s Reasonable Investigation Requirement
Tamara discussed what goes into the reasonable investigation requirement. The USPTO defines a reasonable investigation as “an investigation that produces reliable and credible evidence of nonuse at the relevant time.” A single internet search is insufficient, but not all potentially available sources must be searched. Tamara outlined the many available sources that can be searched and specifically noted that you may include as evidence any attempt to contact the registrant to purchase goods or services, but you must do so as a member of the public or as a consumer. If you attempt contact and reach error messages, then this information is relevant and outcomes should be preserved as evidence.
Tamara explained the building blocks of a prima facie case: past nonuse, current nonuse, bad specimen, fraud relevant to nonuse. In terms of past nonuse – capture screenshots of negative search results and include all evidence in your index. Also, use tools like Wayback Machine. You can also show third-party use of the mark. Additionally, you can show that the registrant/sales are not in the US, but be sure to include translations if relevant. To prove current nonuse, conduct searches on major search engines and platforms including Google Shopping which may help reveal other platforms that you should review. Check e-commerce sites in other countries and determine if they ship to the US. Additionally, you can conduct reverse image searches of design marks.
To prove bad specimens and fraud, you can conduct reverse image searches. You can also find evidence of “specimen farms.” In terms of proving fraud, any evidence discrediting the registrant’s attorney can be helpful.
In terms of documenting and preserving evidence, ensure screenshots are time/date stamped and keep your files organized as part of an index. If evidence is in a foreign language, translate it and capture it with a time and date stamp. Also, be sure that your evidence is legally obtained and admissible.
Learning from Examples
Eric continued on to discuss lessons learned from filings thus far – who are the petitioners and respondents, how long does the petition process take, and what trends are we seeing. As of January 31, 2023, 207 petitions have been filed. 45 have resulted in a canceled or amended trademark application. 46 petitions involved Chinese registrants and 106 petitions involved US registrants. Eric noted that this is interesting because one of the reasons that the TMA was enacted was because the USPTO realized there was an influx of registrations that were inaccurate and had no actual use as well as foreign-based registrations with a laundry-list of goods that were never in use. While the majority of false specimens are coming from China, most of the TMA petitions that have been filed targeted US registrants. Thus far, 7 petitions resolved after the registrant filed a response and the proceeding was terminated while 57 petitions were not instituted.
Initially, registrants weren’t responding petitions, resulting in essentially a default judgment for the petitioner. But now, more registrants are responding. There have been about 40 responses, some requesting cancelation and others responding with evidence of use.
In terms of institution time, the USPTO is taking approximately 30-60 days to institute a proceeding.
We are seeing several common reasons for non-institution including: no itemized index, the investigation consisted of current nonuse only and didn’t include past nonuse, and getting it wrong when it comes to choosing the right type of proceeding, expungement vs. reexamination, and that you are claiming nonuse for the correct period.
Eric identified 7 cases where registrants filed successful responses (3 owned by the same registrant). In these cases, the registrant provided evidence of use including a trademark license agreement, ad reports, invoices, photos of the mark on products, and declarations from licensees and owners.
Lastly, Eric discussed director-initiated proceedings. The USPTO is currently using director-initiated proceedings to essentially “prop up” proceedings that they chose not to initiate. In these proceedings, the USPTO located additional evidence and with that additional support, they were able to initiate the proceedings through a director-initiated proceeding.
Strategies and Scenarios for Challenging Nonuse
Charis concluded the session by discussing strategies and scenarios for challenging nonuse:
- Letters of Protest
- Traditional cancelation proceedings
- Opposition proceedings
The factors to consider when determining which strategy to choose include: timing, involvement, cost, evidence. Expungement and reexamination proceedings have certain time limitations as to when you can bring an action. Before registration, you may use LOPs and cancelation/opposition proceedings. Post-registration, expungement and reexamination proceedings may be relevant. In terms of involvement, the consideration is whether the client must be named or must be involved to protect their interests, and the level of the client’s involvement that is required for the chosen strategy. In terms of cost, the range goes from a LOP which costs $50 to file, all the way to litigation which can cost $600 just for filing fees alone. Lastly, in terms of evidence, you need to consider whether you have enough evidence to file a particular proceeding.
Charis outlined several pros/cons for filing expungement and reexamination proceedings:
- No Standing Requirement
- Less Exposure to The Client
- Less Involvement
- Helps to Clear Deadwood Applications
- Cost with No Guarantees of Favorable Outcome
- Time to Get Results – Delay to Application Process
- Inability to Terminate Process Once Initiated
- Not Useful for Challenging More Common Issues of Priority or Likelihood of Confusion