Challenging USPTO Trademark Registrations Based on Lack of Use: Trademark Expungement and Reexamination

By: Vivek Vaidya

When a trademark application is filed with the United States Patent and Trademark Office (USPTO), it is examined for a host of issues including whether there are confusingly similar trademarks that have already registered.  However, the USPTO doesn’t perform a deep dive of actual use when a trademark application is first filed, so it is possible that a trademark may register fraudulently in the US, even though the registrant never sold a good or provided a service in the country.

For years, the only way to challenge a trademark registration was through Cancellation Proceedings before the Trademark Trial and Appeal Board (TTAB).  However, that process places a heavy burden on those challenging trademarks from a time and cost perspective. 

The Trademark Modernization Act seeks to simplify the process of challenging certain types of trademark registrations by asserting that certain goods and services were never used in the United States, so a particular trademark registration should be altered or altogether cancelled.  This is done by filing either a Petition for Expungement or a Petition for Reexamination.

A petition for expungement would be used if the registered trademark has never been used in commerce or connected with some or all of the goods and/or services listed in the registration. The time frame for filing a petition for expungement is between three and ten years after the registration date.

A petition for reexamination would be used to claim that the trademark was not in use in commerce on or in connection with some or all of the goods and/or services listed in the registration on or before the date that the USPTO required the registrant to file its proof of use (whether with the application or, later, through a Statement of Use.) The time frame for filing a petition for reexamination is within the first five years after registration.

Once either filing is submitted, the petitioner no longer needs to participate and the USPTO takes it from there – which is a much simpler procedure than a full-blown Cancellation Proceeding that can take up to 18 months.

If you have a situation where a registered trademark that is not actually is in use in the US is blocking your trademark application, Expungement or Reexamination may be a viable option to remedy your situation.

Disclaimer: This article discusses general legal issues and developments. Such materials are for informational purposes only and may not reflect the most current law in your jurisdiction. These informational materials are not intended, and should not be taken, as legal advice on any particular set of facts or circumstances. No reader should act or refrain from acting on the basis of any information presented herein without seeking the advice of counsel in the relevant jurisdiction.  Bend Law Group, PC expressly disclaims all liability in respect of any actions taken or not taken based on any contents of this article.