With the implementation of the Trademark Modernization Act of 2020, the US Patent and Trademark Office (USPTO) has now opened its new trademark expungement process.
What Is Trademark Expungement?
Trademark expungement is a process whereby a third party can request that the USPTO cancel a registered trademark on the basis that the trademark was never actually used in commerce.
What is use in commerce?
It is the basic requirement of trademark registration that a trademark actually be used in relation to the sale of specific product or service over state lines.
It is the crossing of state lines that provides the USPTO the Federal jurisdiction to extend the protection of trademark registration, in fact.
In the US, if an enterprise does not cross a state line, it is the exclusive province of the law of the state in which it operations. It is not automatically a Federal matter. This is quirk of the Federalist composition of the United States of America. (It’s the essence of the “united states” part of the name!)
Thus, to be eligible for Federal trademark registration, a business name, product name, slogan, or logo must be used to represent a specific product or service being transacted across state lines.
If a trademark is registered, somehow, without properly or truthfully satisfying the “use in commerce” requirement, it is now subject to the new USPTO trademark expungement process.
How Does the Trademark Expungement Process Work?
The trademark expungement process is initiated with the filing of a Petition for Expungement or Reexamination with the USPTO.
A petition for expungement may be filed anywhere from 3-10 years after the date of registration.
Until December 27, 2023, a petitioner may request a trademark expungement if a trademark is at least 3 years old, without concern for the 10-year maximum age.
This new form allows for a single registration to be petitioned for expungement only. It can be filed by a third party—not against his/her/its own registration.
The petition must allege that the trademark has never been used in commerce in connection with some or all of the goods or services included in its original registration.
In other words, expungement is appropriate not only when the trademark is not used in commerce at all but also when it is only partially used in commerce. That is, when only some of the goods or services for which the mark was registered, are currently actually sold under the umbrella of that registered trademark.
Thus, a trademark registered for use in relation to the sale of t-shirts and duffel bags may be subject to expungement if the owner is currently selling only t-shirts and not duffel bags.
The petition must be filed through the USPTO’s TEAS system, and it carries a $400 per International Class filing fee.
It requires that the petition identify his/her/its identity, address, and contact information. The petitioner must specify exactly what goods or services are the subject of the request.
A written statement supporting the allegation of nonuse must also be included. This statement must be made by someone with a firsthand knowledge of the facts, what those facts are, and the elements of the reasonable investigation into those facts made by the petitioner.
“Reasonable investigation” means that a bona fide attempt to determine whether the trademark was ever really used in commerce was made. Whether an investigation was reasonable will be determined by the USPTO on a case-by-case basis.
Sources of information and evidence supporting a “reasonable investigation” might include:
- State and Federal trademark records;
- Internet websites and media controlled by the registrant;
- Internet websites and media where the relevant goods or services would be sold;
- Print sources and websites containing reviews or discussions of those goods or services;
- Records of filings made by state or Federal regulatory agencies;
- The registrant’s marketplace activities, including attempts to contact the registrant to purchase the goods or services offered;
- Records of litigation;
- Etcetera.
When the petition is filed, the USPTO will email a courtesy notice of the petition to the registrant of the trademark in question.
The trademark expungement process does not require that the petition notice the registrant directly.
Based on the evidence provided, the USPTO will either pursue the expungement with the issuance of a post-registration Office Action—or not. The petition has no further involvement with the process once the petition is filed.
The USPTO’s decision is final and non-reviewable. If an Office Action is issued, it will be up to the trademark registrant to respond to it and argue his/her/its case.
The registrant will have a 3 month deadline for the filing of any response.
Why Did the USPTO Create the Trademark Expungement Process?
The USPTO created the trademark expungement process as a means cleaning house, essentially.
Due to a proliferation over the years of a non-attorney-filed trademark registration applications and overseas applicants of uncertain basis, the Principal Trademark Register has become cluttered with so-called “zombie registrations.”
These “zombie registrations” are trademark registrations that are filed and renewed (and renewed and renewed) for products or services that are not actually being used in commerce in the United States.
The problem with zombie registrations is that they prevent the registration of new trademarks for goods or services that actually are being used in commerce.
It is highly vexatious and frustrating for a legitimate, bona fide entrepreneur or start-up to have its trademark registration application denied on a 2(d) Likelihood of Confusion basis due to the prior registration of a zombie trademark.
If this is you, you know that you are actually selling your product in the US stream of commerce. How frustrating would it be, then, to have your brand and your enterprise derailed because of a prior registration for a product not actually being sold at all?
Very. There is no real likelihood of confusion for consumers if only one of you actually exists—but, nevertheless, the prior registration carries the weight of the law.
Unless it is expunged.
It is beneficial for all involved to clear out the zombies through trademark expungement.
Trademark Expungement: The Bottom Line
The bottom line is that trademark expungement is one of the newest tools available to US trademark lawyers in our quest to protect our clients’ brands.
It is, however, a legal process like any, which must be executed and filed properly, with the right evidence and argument attached.
Likewise, if your existing trademark registration is the subject of a trademark expungement petition filed by a third party, you need a skilled trademark lawyer to help you clarify your use in commerce and to respond to and defend the Office Action filed against you by the USPTO.
Only a licensed US attorney can represent you, either way, before the USPTO.
Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting enterprises in every industry with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.
We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.