The Trademark Modernization Act (TMA)’s New Expungement Procedure
Alt Legal Team | December 08, 2021
A fundamental principle in US trademark law is that a trademark is granted protection so long as the mark is in use. The trademark register must accurately reflect marks that are in use so that brand owners know the corpus of existing filings and are able to clear and register their marks.
The USPTO has faced a number of recent challenges, including an increase in fraudulent applications, fake specimens, and registrations that are not (and sometimes that were never) in use. To confront these issues and provide better accuracy on the register, the USPTO is enacting the Trademark Modernization Act (TMA) which introduces two new nonuse cancellation procedures – expungement and reexamination. This article will provide an in-depth discussion of the expungement procedure and help you understand how to incorporate it into your practice.
Check out our related article on reexamination procedures.
Grounds for Expungement
The expungement procedure is meant to target applications filed under §§1, 44, or 66, that have never been used on some or all of the goods and services identified in the registration. The three ways to institute an expungement filing are as follows:
- Petition initiated
- Director initiated
- Cancellation before TTAB
Note: A claim of expungement is fundamentally different than a claim of abandonment. Abandonment requires nonuse + intent not to resume use. Expungement does NOT require an analysis of the registrant’s intent. Expungement is an entirely new statutory basis for cancellation, evaluating whether the mark was used on the challenged goods and services prior to the filing date of the expungement proceeding.
When to File an Expungement Petition
Ex parte expungement proceedings must be instituted between 3 and 10 years following the date of registration. Until December 27, 2023 (3 years from the TMA’s enactment), a petitioner may request expungement for a registration that is at least 3 years old, regardless of the 10-year limit.
Quantity of Filings and Who May File
There will not be a limit on the number of petitions for expungement of a mark at this time. Additionally, the rule will not require a petitioner to identify the name of the real party in interest on whose behalf the petition is filed but the Director may be able to request that in certain cases.
The fee is set at $400/class, balancing the costs associated with conducting those proceedings (including Director-initiated proceedings) and offering a less expensive alternative than TTAB.
Expungement Filing Procedure
Step 1: The petition for expungement must contain the following allegation:
The relevant registered trademark has never been used in commerce on or in connection with some or all of the goods and/or services listed in the registration.
Step 2: The petition must be complete, namely, it must be in writing and filed through the USPTO TEAS system, and it must include:
- The required fee ($400/class).
- The US trademark registration number of the registration subject to the petition.
- The basis for the petition under §2.91(a), namely expungement (if you were filing a reexamination petition, you would indicate reexamination).
- The name, domicile address, and email address of the petitioner. Note for non-US domiciled petitioners, a designation of a qualified attorney, including the attorney’s name, address, email address, and bar information is required.
- Identification of each good and/or service recited in the registration for which the petitioner requests that the proceeding be instituted on the basis identified in the petition.
- A verified statement signed by someone with firsthand knowledge of the facts to be proved that sets forth in numbered paragraphs:
- The elements of the reasonable investigation of nonuse conducted; and
- A concise factual statement of the relevant basis for the petition, including any additional facts that support the allegation of nonuse.
- A clear and legible copy of all documentary evidence supporting a prima facie case of nonuse of the mark in commerce and an itemized index of such evidence.
Step 3: If a petition does not satisfy the above requirements, the USPTO will issue a letter providing the petitioner 30 days to perfect the petition.
What Constitutes a Reasonable Investigation of Nonuse
When providing evidence of nonuse, the petitioner must have performed a reasonable investigation. A single Internet search is insufficient and the petitioner must describe the investigation as performed, namely, the sources searched, when searches were conducted, and what evidence/information was procured.
Appropriate sources for a reasonable investigation include:
- 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 webpages likely to contain reviews or discussions 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; and
- Records of litigation or administrative proceedings reasonably likely to contain evidence bearing on the registrant’s use or nonuse of the registered mark.
After the Petition for Expungement is Filed
Once the petitioner files a Petition for Expungement, the USPTO will take the following actions:
USPTO uploads petition documents to TSDR.
The USPTO will send a courtesy email to the registrant and their attorney.
Director notifies parties if it decides to institute a proceeding.
The registrant will receive notice via an Office action.
Registrant responds to petition.
The registrant has 3 months to file a response (may request a one-month extension for a fee of $125). The response must provide evidence of use, information, exhibits, and/or declarations to rebut the prima facie case showing nonuse. The response must also identify who is representing the registrant, the registrant’s domicile address, and an email address for electronic correspondence.
The registrant may also respond by deleting some or all of the goods/services listed on the registration. The registrant must pay a fee to delete some or all of the goods/services if they have already filed a §8 or §71 declaration.
The registrant may also submit a request to cancel or amend the registration, but they must also respond to the Office action and notify the USPTO of the separate request.
If the registrant does not respond, the USPTO can terminate the proceeding and cancel the registration in whole or in part. Registrant may petition for revival within 2 months (with actual knowledge) or up to 6 months after cancellation (in extraordinary circumstances.)
USPTO reviews Office action response and takes action.
If the registrant (1) demonstrates sufficient use to rebut the prima facie case, (2) demonstrates excusable nonuse under certain circumstances relating to a registration based on §44, or §66, or (3) deletes goods/services such that no goods/services remain at issue, the proceeding will be terminated and the USPTO will issue a Notice of Termination.
If the registrant’s response fails to establish use or fails to comply with all requirements, the USPTO will issue a final Office action. The registrant must respond within 3 months with a request for reconsideration or an appeal to TTAB. Deadlines cannot be extended.
Should the registrant fail to respond to the final Office action, the USPTO will issue a Notice of Termination, noting the goods/services where use was not established. The USPTO will also issue an order cancelling the registration in whole or in part.
Upon termination of an expungement proceeding where it was established that the registered mark was used in commerce on or in connection with any of the goods/services at issue, no further ex parte expungement proceedings may be instituted as to those goods/services. However, subsequent reexamination proceedings are not barred as they involve a question of whether the mark was in use in commerce as of a particular date, whereas expungement considers whether the mark was ever used.
Once an expungement proceeding has been instituted for a particular registration and is pending, no later expungement proceeding may be instituted for that registration with respect to the same goods/services at issue in the pending proceeding. However, if a subsequent proceeding identifies additional goods/services, it may proceed only with respect to the additional, non-identical goods/services.
Suspension Pending Disposition of an Expungement Proceeding
If the examining attorney has cited a registration in a §2(d) Office action that is the subject of an expungement proceeding, this is considered prima facie, good and sufficient cause for suspension of the application pending disposition of the expungement proceeding.
Where the examining attorney is ready to issue a nonfinal refusal, and the TSDR shows that an expungement proceeding was instituted, the examining attorney must issue an Office action addressing all refusals and indicating that upon receipt of a timely response, the application will be suspended pending the expungement proceeding – whether it is instituted and/or the final determination of the proceeding.
Where the examining attorney is ready to issue a final refusal or denial of a request for reconsideration of a final refusal, the examining attorney must suspend action pending determination of the expungement proceeding. If the proceeding is not instituted or the proceeding is terminated, the examining attorney will remove the application from suspension and issue a final refusal.