What is...nonuse in trademark?

This week we continue our discussion of two TMA proceedings (expungement and reexamination) before the USPTO that allow any party to cancel some or all goods or services in a registered mark due to nonuse.

So, what is nonuse in trademark, in this context?

• For expungement, one must show that there was no use of the mark in connection with the goods or services at any time.

• For reexamination, one must show that there was no use of the mark in connection with the goods or services by a relevant date.

Evidence of nonuse might be:

• a specimen that was a markup

• a specimen that was never used in interstate commerce

  • specimen farms

• never used in U.S. interstate commerce

  • foreign only

  • intrastate only

• one of the goods or services in the description was never used

• no use of the goods or services, as identified (See, In re LocusLink USA InreLocusLinkUSATTAB20240701.pdf)

• a de minimus use - the use was casual, sporadic and nominal (See, Adamson Systems Engineering, Inc. v. Peavey Electronics Corporation, ttabvue-92076586-CAN-51.pdf)

Making your case: (just a few highlights)

• Include an Index of all evidence you are supplying to support institution of the proceeding

• Provide copies of all the evidence in the index

  • Include searches that result in zero hits

  • Include multiple sources

  • Include URLs and the date accessed, for any web pages

  • Include the search strategy

• Provide a summary of what each piece of submitted evidence is being used to show.

Potential sources of evidence of nonuse:

• Web searches

  • online retailers

  • social media

• Way Back Machine - to show when there was/was not use

• Reverse Image searches - for marks with design elements

• Industry-specific searches - regulatory bodies/agencies listings, certifications, etc.

• Evidence of specimen farms - listings like wish or temu where something is "off"

This is a rich area for discussion and these proceedings can be a cheaper and faster method to clear the Register of 'dead wood' making way for use of marks in commerce.

Please reach out to KPIPlaw.com to discuss how we may assist you or your company in patent, trademark, or copyright protection in the US and around the world.

For additional information on expungement and reexamination proceedings before the USPTO, see USPTO implements the Trademark Modernization Act | USPTO.