Trademark Expungement and Reexamination

A trademark reexamination proceeding is basically a way to alert the United States Patent and Trademark Office (USPTO) that a particular trademark registration should be canceled (either in whole or in part) because the trademark was not in use in commerce as of a certain date.  An individual or entity (referred to as the “petitioner”) commences a trademark reexamination by filing a Petition for Reexamination through the Trademark Electronic Application System (TEAS) and paying the government filing fee.  A Petition for Reexamination can only be filed against trademarks that are registered under Section 1(a) (use in commerce) and only under the following circumstances:

• The trademark registration must be less than five years old (measured from the registration date of the trademark); and

One of the following conditions is met:

• If the application was initially filed under Section 1(a), and was never amended to Section 1(b) (intent to use): the mark was not in use in commerce in connection with some or all of the products/services recited in the registration as of the application filing date.
• If the application was initially filed under Section 1(b), or was later amended to Section 1(b): the mark was not in use in commerce in connection with some or all of the products/services recited in the registration as of the filing date of the Amendment to Allege Use.
• If the application was initially filed under Section 1(b), or was later amended to Section 1(b): the mark was not in use in commerce in connection with some or all of the products/services recited in the registration as of the expiration of the deadline for filing the Statement of Use.

If these circumstances don’t apply, then you might have the option of filing a trademark expungement proceeding or a trademark cancellation against the registration instead.

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A trademark expungement proceeding is essentially a way to inform the United States Patent and Trademark Office (USPTO) that a certain trademark registration should be canceled (either in whole or in part) because the trademark has never been used in commerce.  An individual or entity (referred to as the “petitioner”) commences a trademark expungement by filing a Petition for Expungement through the Trademark Electronic Application System (TEAS) and paying the appropriate filing fee.  A Petition for Expungement can be filed against any trademark registration (including registered extensions of protection under the Madrid Protocol) so long as the following two conditions are met:

• The trademark has never been used in commerce in connection with some or all of the products/services recited in the registration
• The trademark registration is between three and ten years old (measured from the registration date of the trademark)

If these two conditions aren’t met, then you may have the option of filing a trademark reexamination proceeding or a trademark cancellation against the registration instead.

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