A PI's PerspectiveHow to Conduct Reasonable Investigations for Expungement & Reexamination Proceedings
Tamara Rabenold | September 12, 2022
Since the Trademark Modernization Act of 2020 (TMA) was enacted in late December 2021, trademark practitioners have been eager to test out the two new ex parte procedures created by the TMA – expungement and reexamination. To date, over 150 petitions have been filed with the USPTO. Through each USPTO response and decision, it gives us an opportunity to learn more about what it takes to demonstrate a prima facie case to the USPTO, sufficient to initiate a new proceeding. The below graph reflects the total number of petitions each month along with how many of the filings were expungements vs. reexaminations. To date, 54% of the petitions have been for expungement, while 46% have been for reexamination.
After reviewing the TMA filings (a list of petitions received is available on the USPTO website), it’s clear that conducting a reasonable investigation and properly submitting the findings into evidence is crucial to demonstrate a prima facie case for expungement or reexamination. In this article, we will discuss the reasonable investigation requirement as an integral part of an expungement or reexamination filing. Just how critical is this component to your verified statement? If any indication, the term investigation alone was used 47 times within the TMA’s Final Rule published November 17, 2021. As a team of investigators, we were giddy over the USPTO’s repeated reference to our tradecraft!
Whether you aim to prove a particular mark was never used (expungement) or not used in commerce with the goods or services claimed on or before a particular date (reexamination), the foundation for a reasonable investigation is the same. Our intention with this article is to support your efforts in conducting a reasonable investigation with an investigator’s perspective on capturing evidence supported by the guidance in the TMA and our experience, while also uncovering a few tools of our trade that you might not be familiar with.
Administrative Matters — Pre-Search Considerations
Before you begin conducting your search, there are two important matters to keep in mind. First, all screenshot evidence must be time/date stamped. In a pinch, ‘print screen’ may work but it isn’t ideal since it may alter how the content on a website displays. Some tools that have the capability to capture the URLs, dates and time stamps include Snagit and Page Vault.
The second important matter to consider is that you must supply an index of evidence. Omitting this index is a guaranteed way to delay your petition and receive a 30-day letter from the USPTO. Throughout your investigation, organize the evidence in one place and name the files in a way to make them easily identifiable as you craft your verified statement and cite them in the statement and your index. It will save you time in the long run. The USPTO has provided a number of index examples that you may follow for reference.
What, When & How To Collect Evidence?
The TMA proceedings require petitioners to prove nonuse which can be quite a challenge. As investigators, we want to FIND answers, so we must reframe our mindset when proving nonuse is the objective. This documentary proof includes the absence of findings. Keyword searches that result in no relevant findings are your friend! It is essential to capture them and include them with an index of evidence.
Documenting evidence of nonuse can be tedious. However, it is better to err on the side of collecting too much evidence rather than not enough. Assuming this stance when conducting your reasonable investigation is to your benefit, even if you decide not to include all of it as part of the verified statement. While the USPTO may issue a 30-day letter to allow you an opportunity to correct aspects of a petition it finds lacking, new evidence will not be accepted. Therefore, it’s important to digitally preserve everything that might prove useful at once, even if you opt to exclude some of it or find more compelling evidence at a later stage of your investigation.
Also, capture the evidence when you first see it, even if just a cursory Google search or visit to the website at the onset of your investigation. You may not need it, but you will have it. No one can predict when a subject’s website will go down, a listing removed, or online content changed. Speaking from experience, we can attest that it often occurs at the most inopportune time! While the Wayback Machine or Google’s cache may save you in some instances, the best route is to preserve a screenshot of the potential evidence when and as you find it.
What is the Relevant Date or Date Range Tied to Use in Commerce?
When filing a petition for expungement, your aim is to prove that the trademark was never used in commerce in connection with any or all of the listed goods or services. In terms of the relevant date, the first use date on the registration will at least give you a starting point as to when use was claimed to help target your research.
A few simple ways to start proving your case that a mark was never used in commerce is to locate social media posts referencing the trademark on/around the registrant’s claimed first use date on their identified social media accounts (if found) as well as archived images of the website (if available).
When filing a petition for reexamination, the relevant date range is key to ensuring that your evidence is captured to prove nonuse at the right time. Although it seems more nuanced than it should be, the USPTO explains how to identify the relevant date here as per the excerpt below:
Any party may request cancellation of some or all of the goods or services in a use-based registration on the basis that the trademark was not in use in commerce with those goods or services on or before a particular relevant date.
-When the underlying application was initially filed based on use in commerce and not amended during examination to an intent-to-use basis, the relevant date will be the filing date of the application. [If filed based on §1(a) use in commerce, the relevant date is filing date]
-When the underlying application was filed or amended to an intent-to-use basis, the relevant date is the date that an accepted amendment to allege use was filed or the end date of the statement-of-use period for an accepted statement of use. [If filed based on §1(b) ITU, the relevant date is end date of statement-of-use period for accepted statement of use]
According to the TMA, the information and related evidence should be taken from reasonably accessible sources that can be publicly disclosed. More specifically, “As set forth in proposed § 2.91(d)(2), appropriate sources of evidence and information for a reasonable investigation may include, but are not limited to:
- State and Federal trademark records;
- Internet websites and other media likely to or believed to be owned or controlled by the registrant;
- Internet websites, other online media, and publications where the relevant goods and/or services likely would be advertised or offered for sale;
- Print sources and web pages likely to contain reviews or discussion of the relevant goods and/or services;
- Records of filings made with or of actions taken by any State or Federal business registration or regulatory agency;
- The registrant’s marketplace activities, including, for example, any attempts to contact the registrant or purchase the relevant goods and/or services;
- Records of litigation or administrative proceedings reasonably likely to contain evidence bearing on the registrant’s use or nonuse of the registered mark; and
- Any other reasonably accessible source with information establishing that the mark was never in use in commerce (expungement), or was not in use in commerce as of the relevant date (reexamination), on or in connection with the relevant goods and/or services.”
Identifying and Investigating the Registrant
While many of the aspects of the TMA’s guidance seem simple and straightforward, this is only true if you are clearly able to identify who the registrant is and locate their related physical and/or digital footprint. Based on the sources of evidence identified by the TMA, below are some resources to support your research when the registrant is more difficult to identify/locate.
- Internet websites and other media likely to or believed to be owned or controlled by the registrant
As stated above, you need to know as much as possible about who the registrant is in order to look in the right places to locate the relevant, owned or controlled content. Your first step should be to review the TSDR, and compile all the relevant identifiers (i.e. company/person’s name, address, e-mail, etc.) to begin your research. Next, with the availability of open-source intelligence (OSINT), you may find many of the answers you seek in free public sources.
Based on a company name, Open Corporates allows you to search publicly available corporate records across the US and 80+ countries, including Hong Kong, the UK and France. It also permits searches by officers’ names, although this feature is not available in every jurisdiction. Search results are categorized by location with hyperlinks to the source website. Browse the list of available jurisdictions to ensure those potentially encompassing your relevant parties are included. If search results are not found, it doesn’t mean that they don’t exist. You just may need to further research what corporate records are available in the related jurisdiction. If corporate records indicate that a subject company is dissolved, this may be beneficial on your path to prove nonuse.
If you prefer visuals, you may find Corporationwiki.com helpful. This site displays company names, individuals associated with each company, locations, and even trademark filings – all in one place; as well as associations between companies and individuals. Keep in mind that the companies and individuals listed can request to have records removed from public view as part of the site’s opt-out policy so always verify your findings with a second resource.
For research on the individuals’ names, potential officers and addresses on file with the USPTO, there are a number of OSINT tools at your disposal. One such tool is Melissa.com which offers reverse searches on names and addresses. Determining who and what is located at the address on the trademark registration may identify other related parties or entities that could broaden or narrow your scope. For instance, if one company is named on the USPTO record, but a promotional products company appears to be located at the address on file, it may identify a relevant channel where the goods/services of interest are displayed or sold.
For the OSINT geeks, a comprehensive directory is available here. OSINT Framework offers a user-friendly interface of resources categorized by the area of focus.
Investigating The Registrant’s Website
If you locate a website tied to the registrant, it can be a goldmine to prove nonuse. In the successful petitions filed to date, archived images of websites are a staple to prove nonuse during a relevant timeframe.
You can start by looking at archived versions of the website located at Wayback Machine. With any archived website captures, the frequency and extent that a site has been crawled is unpredictable. You could get lucky in finding or NOT finding use of the mark in question for the relevant date range. Cachedview.com provides one place to easily search for the last Google Web cache, the Archive.org timeline of cached pages, and the live website.
Unless it is abundantly clear that the site is directly tied to the registrant based on the site content, you may want to confirm ownership. To confirm that the website is owned and/or operated by the registrant or related party, WhoIs records are invaluable when available. While GDPR made many WhoIs records private, you can still get behind them in some instances depending on the age of the registration. ViewDNS.info is one resource that offers WhoIs record searches along with other reverse search options. Even if the WhoIs is private, searching by the registrant name or e-mail address in a ‘Reverse WhoIs Lookup’ may reveal sites that are or were owned by the registrant at one time. It will take additional digging, but it could provide a lead that you would not have had otherwise. There also are historical WhoIs records available from paid sources like DomainTools.
Compiling Evidence from Internet Searches
Since Google is the top ranked search engine with over 90% of the worldwide market share, you’re likely very familiar with using it. If your keyword search query provides too many results, narrowing the scope helps you to review the most relevant findings. Even if your verified statement focuses on the broader search query, you can cover your bases by performing more specific searches so as not to potentially miss a key result AND if none are found, it further illustrates that no relevant use is located based on the targeted criteria.
Beyond Google, it often proves valuable to run keyword searches on another search engine, as it yields a different order of results based on that platform’s site indexing and search algorithms. While you may consider Bing or Yahoo, Karma is another option, and as a feel-good bonus, the revenues generated from sponsored links are used to protect biodiversity and animal welfare.
Many search engines also track online activities through your browser history, cookies and other crumbs you leave behind as you surf the web to provide a more personalized user experience. This may be great for your personal online shopping needs but not so much for your investigation. Google offers an “Incognito” (Ctrl+shift+N) option to eliminate some saved data from impacting your search results. Additionally, independent search engines, like Brave, are an asset to your efforts because they have their own methods of collecting, crawling and providing search query results. It also provides more privacy, blocking pop-up ads, trackers and third-party data storage. In our investigations, we often only need to locate one new lead to make these extra search efforts worthwhile.
Particularly if you are seeking evidence of nonuse between certain dates, narrowing search results by a custom date range may be a worthwhile datapoint to demonstrate research into the timeframe when the mark was claimed to be in use. Most search engines have a way to do this.
For example, to select a particular timeframe on Google, simply select “Tools” under the search bar to give you the ability to select your date based on pre-set options or enter a custom range.
Another helpful Google search tool that you can use is the “Verbatim” function listed under “All Results” just below the search bar. If you are searching for the trademark at issue combined with a keyword from the relevant class, the Verbatim results may be more helpful. In the example of a search for “reasonable investigation”, “All Results” produces about 463 million hits, while “Verbatim” cuts that number in half.
If you want to search Verbatim and within a particular timeframe, it is available through the Advanced Search function, along with other ways to further customize your search. Explore this option here or by accessing it under the settings gear icon.
In-Depth Investigations — Searching Marketplaces
Beyond internet searches, other avenues to consider are news outlets and trade publications specific to the registrant’s industry and/or the goods/services covered in the registration. Based on the class with potential clues from the specimen (which we haven’t even discussed), if there is use claimed on product labeling that is subject to certain advertising or other regulatory requirements (i.e. beer, wine, tobacco), there are a host of other resources to explore. When proving nonuse, remember that negative search results from relevant sources are results that may help prove your case. The TMA allows petitioners to put forth evidence showing:
- The registrant’s marketplace activities, including, for example, any attempts to contact the registrant or purchase the relevant goods and/or services.
If products within the classes identified on the trademark registration are frequently offered on a particular ecommerce marketplace, searching the top U.S. marketplaces like Amazon, eBay, Etsy, Walmart, is a must. Targeted searches through Google Shopping are also helpful in identifying other potential relevant results across these marketplaces and other ecomm stores. Remember that no hits may help demonstrate nonuse in conjunction with your other research. In the event you believe it may be relevant to your case, on https://allcraigslistsearch.com, you are able to search across Craigslist, eBay, Offerup, and Facebook marketplace in one place.
If your registrant is not based in the U.S., always search the top marketplaces specific to that country for evidence of use in commerce. It may open avenues to potential history of sales or give you relevant leads related to sales in the U.S. Examples include: Mercado Libre (Latin America); Allegro (Poland); Alibaba Group’s sites (China).
Should the registrant be found offering products on a foreign platform or website, look for indicators that the site only operates in that region. Does the site accept payment in USD or provide currency conversion? If an ecommerce site, does it ship orders internationally and/or to the U.S.? Verifying this could be as easy as attempting to add an item to your cart, starting the purchase process and seeing if the website allows you to enter a U.S. address. If not, this may help demonstrate that there is no use in commerce in the U.S.
The TMA’s guidelines reference to “contact attempts” with the registrant is certainly an avenue to consider towards demonstrating nonuse. In general, during our investigations, we find that feedback directly from the source (i.e. registrant) proves to be some of the most valuable evidence, whether obtained through marketplace dialog, the registrant’s website or by e-mail/phone. As an attorney, if you are conducting the reasonable investigation yourself, the potential dilemma here may be whether or not you are comfortable contacting the entity in what could be considered as a deceptive manner based on the Rules of Professional Conduct. If you get to this point and believe direct dialog may be an important component for your case, it may be worthwhile to engage an outside investigative resource to support these efforts and alleviate any concern of potential misconduct.
As a final note related to foreign registrants, if you locate relevant evidence to support nonuse that is not in English, whether found on the registrant’s website, through dialog or other online content, provide a translation of the text with the translation source and date obtained (i.e. digital evidence of the content in the original language followed by the English translation by Google translate and include in the index of evidence). Otherwise, it may trigger a 30-day letter from the USPTO with this request, delaying your petition.
Whether you are ready to file an expungement or reexamination petition or are just learning more about the TMA, we hope you gleaned something useful to support your future reasonable investigations efforts. On a final note, the USPTO states “a petitioner is not required or expected to commission a private investigation,” so the choice of hiring investigators or handling it internally is up to you. Whatever you choose, our excitement over the new ex-parte proceedings lies in the fact that the USPTO clearly values deliberate research and articulate findings of fact bolstered by relevant evidence. As investigators, we cut our teeth on these fundamentals!
If you are looking to learn more about the TMA and expungement and reexamination proceedings, Alt Legal has published a number of resources including:
- USPTO Update: TMA Expungement and Reexamination Proceedings
- USPTO Implements Trademark Modernization Act (TMA) Final Rule
- The Trademark Modernization Act (TMA)’s New Expungement Procedure
- The Trademark Modernization Act (TMA)’s New Reexamination Procedure
- USPTO Webinar Summary: Insight into TMA Nonuse Cancellation Petitions
Disclaimer: This is not legal advice. The OSINT resources cited throughout this article are not related to, owned by or otherwise affiliated with Vaudra International. The resources are meant for informational purposes only. Any single resource is NOT meant to be your only resource. OSINT findings should be verified against at least one additional resource.