The U.S. Patent and Trademark Office (“USPTO”) has received more than 170 petitions for expungement and reexamination since it began accepting these new filings late last year. And although the Office has issued guidance about how to prepare and submit a petition properly, it has reported a number of “common mistakes” that could easily be cured by those with otherwise meritorious claims.

The procedure was created under the Trademark Modernization Act of 2020 (“TMA”) to combat fraudulent filings that may be blocking legitimate rights holders from obtaining trademark registrations, which in the United States must be supported by legitimate and continuous use of the trademark in interstate commerce. In addition to creating a new statutory basis for petitions to cancel for nonuse at the USPTO’s Trademark Trial and Appeal Board (“TTAB”) pursuant to 15 U.S.C. § 1064(6), the TMA provided for two new avenues for ex parte examination: expungement pursuant to 15 U.S.C. §1066(A) and reexamination pursuant to 15 U.S.C. § 1066(B).

  • Expungement petitions may be filed between the third and tenth years of registration if a mark is alleged to have never been used in interstate commerce.
  • Reexamination petitions may be filed up to five years after registration if a mark was not used as claimed during the application process (i.e., on the filing date of a use-based application or on the date an amendment to allege use is filed, or the deadline to do so expires, for intent-to-use applications).

The USPTO issued a notice of proposed rulemaking on May 18, 2021, and on November 17, 2021, issued a formal rule implementing specific procedural requirements for petitions, which may be submitted via the USPTO’s online filing system using forms available here. The rule also sets forth criteria for examination of each new petition by the Director of the USPTO, who has sole discretion to determine whether a sufficient prima facie case has been made. Petitions meeting that initial threshold will be sent to the Examiner, who will issue an initial post-registration Office Action refusal.

A registrant has three months to provide a response rebutting the petitioner’s case. The Examiner will review the petition and response filing, if any, and will determine whether to issue a final Office Action cancelling the registration, or whether the registration should be sustained and the proceeding terminated. An ex parte appeal may be filed with the TTAB within three months of the final Office Action refusal.

The TTAB only published procedural guidelines for appeals for the first time in the June 2022 edition of its Manual of Procedure, so there is not yet any case law guidance on expungement or reexamination. Instead, petitioners are left with preliminary evaluations from the USPTO itself, including the March 2022 report entitled “Insights into Trademark Modernization Act nonuse cancellation petitions” and the informal guidance on best practices the USPTO published on its website.

Here are five of the most common mistakes in expungement and reexamination petitions reported by the USPTO in recent publications, and how the Office suggests avoiding them:

Mistake #1: Failing to Properly Investigate Your Claim

The TMA provides that any petition for expungement or reevaluation should be based on a “reasonable investigation,” but does not enumerate on what, exactly, that might mean in practice. Even the USPTO’s November 2021 regulations indicate that sufficiency of an investigation into the registrant’s nonuse is a “case-by-case determination.” However, the regulation clarifies that the investigation should include at least:

  • A focus on the specific mark disclosed in the registration (as opposed to business activities of the registrant in general, or other marks used by the registrant);
  • A focus on specific goods and/or services alleged not in use, “keeping in mind their scope and applicable trade channels”;
  • Research using “reasonably accessible sources that can be publicly disclosed”;
  • Research into past use (for the relevant period) as opposed to just current nonuse; and
  • Online research involving more than a single search using a single Internet search engine.

The regulations confirm that there is no expectation that the petitioner necessarily hire a third-party investigator to assist, but if one has been commissioned, the USPTO advises that a petitioner may choose to generally reference the investigator’s results without disclosing information that might waive privilege.

Mistake #2: Failing to Attach Enough Evidence

Proving nonuse is proving a negative, which the USPTO recognizes can be difficult. In reviewing prior petitions, the Examiner has looked to whether the petitioner meets the “reasonable predicate” standard set forth in In re Pacer Tech., 67 USPQ2d 1629 (Fed. Cir. 2003). This might include evidence of a fake or digitally altered specimen, evidence of lack of presence of the registrant in the U.S., or lack of Internet presence of the registrant in general (especially where the goods at issue are consumer goods that are typically sold online).

In addition to a verified petition explaining the nature and scope of investigation conducted, the USPTO requires at least some additional documentary evidence corroborating findings. Potential sources of such documentary evidence are set out in 37 C.F.R. § 2.91(d)(2):

  • State and federal trademark records (including maintenance documents from other registrations showing deletion or nonuse of goods or services for the same, or a very similar, mark);
  • Internet websites and other media believed to be owned/controlled by registrant (including historical records from or other sources demonstrating nonuse throughout the relevant period);
  • Internet websites where goods/services likely to be advertised or offered for sale (for example, screenshots from search results on major retailers’ websites; searches on several different retailers are encouraged);
  • Print sources and websites likely to contain reviews or discussions of goods/services;
  • Records of filings made with, or of actions taken by, state or federal business registration or regulatory agency;
  • Registrant’s marketplace activities (including attempts to purchase from registrant, or proof of websites where consumers are not actually able to purchase the goods);
  • Records from litigation or administrative proceeding; or
  • Any other “reasonably accessible source” with evidence bearing on use/nonuse.

Petitioners are encouraged to remember that evidence as to each of the goods and services at issue must be included. For example, a fake specimen as to only one of the goods identified in a class is not enough to demonstrate nonuse of that entire class.

Finally, it is important to note that petitioners are bound by the ethical rules requiring candor toward the USPTO and therefore must disclose any evidence or information that undercuts their position pursuant to 37 C.F.R. § 11.303(d).

Mistake #3: Attaching Too Much Evidence

Petitioners have been faulted for providing large “data dumps” that contain innumerable documents with questionable relevance. For example, if referencing other filings/proceedings, include only the relevant portions as opposed to entire file records.

The USPTO’s website urges that in general, petitioners should “avoid providing any evidence in the record that doesn’t directly address or support your allegation of nonuse.”

Mistake #4: Attaching Illegible Evidence

The USPTO may ignore Internet printouts that do not have legible URLs and access dates. When including screen captures, those printouts must be large enough to be legible, as well.

Mistake #5: Failing to Include a Proper Index of Evidence

USPTO regulations require that an index of evidence be submitted with every petition for expungement and every petition for reexamination. There is no specific format requirement, other than the index should specify to which good or service each piece of evidence applies.

The USPTO has provided several examples that petitioners may use as templates here.

In sum, although there is not yet much guidance from the TTAB regarding the contours of a successful petition to expunge or reexamine within the meaning of the TMA, petitioners have plenty of guidance to rely upon from the USPTO as they take advantage of this new resource.