What is [are]...two ex parte proceedings for cancelling unused registered trademarks?

The U.S. Trademark Modernization Act (TMA) went into effect in December of 2021. The TMA provides two ex parte proceedings that allow any party to challenge any good or service in a trademark registration, by providing evidence sufficient to establishing a prima facie case of nonuse. The two proceedings are expungement and reexamination.

Expungement must be requested between three and ten years after the registration date and is available for registrations based on use in commerce, a foreign registration, or the Madrid Protocol (Sections 1, 44, and 66). To cancel of some or all of the goods or services in a registration using expungement, the registrant must have NEVER used the trademark in commerce with those goods or services.

Reexamination must be requested within the first five years after the registration date and is available only for use-based registrations (Section 1 only) on the basis that the trademark was not in use in commerce with the goods or services on or before a particular relevant date.

If the application was filed based on use in commerce, then the relevant date is the filing date. If the application was filed based on, or amended to, an intent-to-use application the relevant date is the date that an accepted amendment to allege use (AAU) was filed, or the period end date for an accepted statement-of-use (SOU).

These proceedings can be filed anonymously, but they may not be withdrawn once filed. These proceedings may cover an entire registration, an entire class, or a portion of a class. At this time, the cost is $400 per class. Once instituted, the Office will take over the proceeding and give the registrant an opportunity to rebut the prima facie case of nonuse by showing either use (1) or excusable nonuse (44 or 66). In addition to third party filings, director-initiated versions of both expungement and reexamination are possible.

If there is sufficient evidence of nonuse (not abandonment) in a registration, then these proceedings may provide you or your client with a cheaper and faster option as compared to a cancellation proceeding before the TTAB.

Next week, we will cover the process for introducing and the types of evidence needed for a sufficient showing of nonuse to make a prima facie case for cancellation of some or all of the goods or services in a registration using expungement or reexamination.

Thank you to the USPTO for hosting a recent webinar on this topic directed to experienced practitioners.