When would an expungement or reexamination be available?
These two fancy names bear good news for trademark challengers. Anyone thinking of canceling a trademark registration should be encouraged by the Trademark Modernization Act. Known as TMA, the new rules give IP owners more cost-effective ways to attack trademark registrations based on non-use. This post will cover some key differences between an expungement and a reexamination, including situations that might warrant one or the other. We’ll also cover fact patterns where neither option will work.
X = never
An expungement attacks a registered trademark on the basis that it has never been used. Not in the past, and not now. The word eXpungement reminds me of the letter X. So remember, X = never used.
A request for expungement must be filed between 3 and 10 years after the registration date. Registrations older than 10 years would not be vulnerable to an expungement attack. There is one exception. Registrations older than 10 years are still susceptible to an expungement proceeding until December 27, 2023.
Registrations younger than 3 years would still have time to remedy any nonuse. An expungement, therefore, might not be an option if you’re seeking to cancel a younger registration.
What are the requirements for expungement?
Here are the requirements for expungement:
- mark has never been used; and
- registration is between 3 and 10 years old (except that older registrations may be expunged until the December 27, 2023 cutoff)
Reexamination = repeat examination
Think of “re” as in repeat. This will help you to remember that reexamination involves examining a trademark file again. In other words, the USPTO will re-examine what happened in the past to determine if there were actual usages of the mark. This proceeding focuses on certain key events during the file history of a trademark application:
- the initial filing of a trademark application based on use, known as Section 1(a); or
- the filing of a Statement of Use in an Intent-To-Use (ITU) application, known as Section 1(b).
What do both events above have in common? They each involve a declaration made by the applicant that the mark was being used on the goods or services at the time when the declaration was submitted.
For a trademark application based on use, that declaration is included in the initial filing of the trademark application. That means the applicant would have been required to submit evidence of use concurrently with the initial filing of a Section 1(a) use-based application. A petition for reexamination asks the USPTO to re-examine the use evidence submitted with the initial filing of the trademark application. If the mark was, in fact, not used on the pertinent goods or services as of the application filing date, the registration will be canceled.
If a trademark application was based on an intent to use, the declaration of use is made when the applicant files a the Statement of Use after the initial filing. So the main question in an ITU application is whether the applicant actually use the mark on the identified goods or services when the Statement of Use was filed.
For registrations younger than 3 years, reexamination may be a viable option.
What are the requirements for reexamination?
Here are the requirements for reexamination:
- the mark was not used as of the initial filing of a use-based application or the filing date of a Statement of Use; and
- the registration is younger than five years.
Registrations that are 5-years old or older cannot be reexamined, so reexaminations have a shorter deadline than that of expungements.
What circumstances would not warrant expungement or reexamination?
There are some situations involving nonuse that would not be eligible for either proceeding. Below are some examples.
- A trademark that was properly used during the trademark application, but not currently in use;
- After December 27, 2023, any trademark registration older than 10 years;
- A registered trademark that was not properly used during the application process, but is now over 5-years old.
In such scenarios, a potential challenger may need to consider filing a trademark cancellation. As discussed below, a cancellation is a two-party (inter partes) dispute that will likely result in higher legal fees.
Ex parte vs. Inter partes: What is the difference between 1-sided and 2-sided proceedings?
Ex parte means one-sided. Expungement and reexamination proceedings are ex parte, so the USPTO deals with only the registration owner if a proceeding is instituted. After filing a petition, the petitioner has no further involvement in the proceeding.
Trademark cancellations are inter partes, meaning that they are two-sided. Since an inter partes dispute is adversarial in nature, you can expect higher legal costs and a more contentious battle between the challenger and the registration owner.
How can you use expungement or reexamination to respond to a trademark Office Action rejection?
In the past, you had only a couple of options to remove a blocking registration. If a renewal deadline was quickly approaching, you could wait and see if the owner would fail to renew in time. Alternatively, you could file a cancellation.
An applicant now has more options in responding to a likelihood of confusion refusal. If the timing requirements and nonuse conditions are met, a trademark applicant can explore the option of requesting expungement or reexamination prior to the Office Action deadline. After filing a timely petition, the applicant may respond to the Office Action by requesting a suspension that would last until the outcome of the expungement or reexamination proceeding.
Where can I find a list of expungement and reexamination petitions?
Here’s a list of petitions filed with the USPTO.
Need to request expungement or reexamination of a registered trademark?
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