Trademark owners seeking clarity or new trademark applicants looking for a clearer path to registration sometimes face currently registered trademarks that pose problems. Such registered trademarks may have problems of their own—questionable or fraudulent specimens, false statements, abandonment during a period when a renewal is not due for years, etc. For many years, the only solution for removing such trademarks from the Register at the Trademark Office was to file a cancellation proceeding. Cancellation proceedings can end up being expensive and time-consuming, so owners and applicants were hesitant to pursue them. Then in 2021, the Trademark Office implemented two procedures that offered alternatives to a cancellation proceeding—expungement and reexamination—directed to the most common reason for cleaning up registered trademarks: non-use.
Trademark Expungement and Reexamination for Non-Use
To maintain their registration, trademark owners are required to use their trademark in commerce for all the goods and services listed in the registration. However, when active trademark registrations include goods and services that no longer apply, they can block subsequent legitimate owners from registering the same or a similar mark.
Expungement and reexamination proceedings are two ways a party can challenge a registration due to non-use in an attempt to cancel that registration. These proceedings are generally less expensive and more efficient than a formal cancellation proceeding. If the request succeeds, the Trademark Office will delete those goods or services from the registration or cancel the registration altogether, thereby freeing up the path to registration for new applicants.
The type of proceeding depends on the particular facts. A party may institute an expungement proceeding if it can show that the owner never used the trademark in commerce with reference to some or all of the goods or services listed in the registration. Caveat: expungement must be requested between three and ten years after the trademark registration date.
A party may also institute a reexamination proceeding if it can show that the owner did not use the trademark in commerce with reference to some or all of the goods or services listed in the registration on or before the date for showing proof of use. The “relevant date” is the date when the underlying application was initially filed based on use in commerce. For an intent-to-use application, the “relevant date” is the date that use is shown or the end date of the statement-of-use period for an accepted statement of use. Caveat: reexamination must be requested within the first five years after registration.
How to Request Trademark Expungement or Reexamination
To institute either an expungement or a reexamination proceeding, a party must submit the relevant form requesting that the Trademark Office institute a proceeding, including a verified statement, evidence supporting non-use (such as past and current non-use, fake or digitally altered specimens of use, or evidence of improper behavior that is relevant to non-use), and a $400 fee per class of goods or services challenged. The trademark owner is notified and can submit a response. Aside from the original filing, no other documents are required. The Trademark Office will then consider all the evidence and make a determination. This process can take anywhere from four to twelve months.
For comparison purposes, the cost to institute a cancellation proceeding at the Trademark Office is $600 per class and can last up to three years. This does not include any legal fees incurred as a result of engaging in the adversarial proceeding, including motion filings and discovery.
Evidence Requirements and Limitations
Important point: the evidence supporting non-use portion of the request is extremely important, yet somewhat opaque. The Trademark Office provides a bullet list of relevant evidence at its “USPTO implements the Trademark Modernization Act” web page under Trademarks/Law (the “Evidence” drop-down menu), but it’s unclear what the threshold of sufficient evidence is. For example, if a requester has strong evidence regarding two bullet points, but none for the others, is that enough? Or, if a requester has mild evidence for many bullet points, is that enough? It’s not clear. Also, there appears to be an internal requirement for the ordering and presentation of the evidence that is not quite clear. At the same web page noted above, there is an “example indexes” link under “How to request institution of proceedings”, but these indexes, while helpful, do not seem to cover everything the Trademark Office expects from a requester.
While these proceedings do provide some hope to owners and applicants for canceling troublesome registrations, they are somewhat limited by their time limits and requirements for evidence. An owner or applicant looking to cancel a registration for non-use, even obvious non-use, when that registration has been on the register for 20 years will have to look elsewhere.
For trademark owners and applicants facing potentially blocking registrations, expungement and reexamination may provide a more efficient alternative to a formal cancellation proceeding when non-use is at issue. Contact Conley Rose to discuss whether these procedures may be appropriate for clearing the path to registration and protecting your trademark strategy.