Trademark reexamination: A new way of attacking registrations
Back in the old days, you had to file a TTAB cancellation in order to cancel a trademark registration for lack of use. A trademark cancellation proceeding is like a mini-lawsuit where the challenger and the registration owner engage in an adversarial battle. But what if you wanted to cancel a trademark registration based on nonuse without going through all the expense and effort of litigation? A trademark reexamination may be the answer under the right circumstances.
What trademark registrations are eligible to be reexamined?
Only trademark registrations less than 5-years old may be reexamined. So there is basically a 5-year deadline to request reexamination of a trademark registration.
What is the basis of a trademark reexamination?
A reexamination request focuses on certain key events during the trademark application process. In other words, what happens after the registration date does not matter. The focus is on whether the applicant properly used the mark at either:
- the initial filing date of an application based on use; or
- the filing of a Statement of Use in an Intent-To-Use application.
A reexamination request, therefore, would not apply to a registration where the applicant had used the mark properly during the application, but has since abandoned the mark. Such circumstances may warrant an expungement or a cancellation proceeding.
What is cost of a trademark reexamination request?
The USPTO fee is $400 per class of goods or services. Our fee for preparing a petition starts at $4,000. What makes a petition effective is both the quantity and quality of evidence of nonuse. Since it may be difficult to prove a negative, your trademark attorney needs to be creative in showing how the applicant failed to use the mark on the relevant goods or services as of key dates during the trademark application process.
An index of documentary evidence should identify all the exhibits of evidence. An effective petition requires a thorough investigation coupled with effective legal drafting of arguments.
Need to cancel a trademark registration?
Thank you for rating my post!
We want to do better.
Could you tell us what was missing in our post?