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.
What Does a Petition for Expungement Require?
Section 1716.02(b) of the Trademark Manual of Examining Procedure (TMEP) sets forth all of the requirements for a “complete” submission of a Petition for Expungement. I strongly encourage you to carefully review the requirements because once the USPTO deems the Petition to be “complete,” it cannot be amended under any circumstances and no additional evidence or arguments can be submitted.
If the Petition for Expungement fails to include all of the elements for a “complete” submission, then the USPTO will send a letter to the petitioner detailing what is missing. The petitioner must respond to the letter within thirty days by complying with the outstanding requirements. If the petitioner doesn’t timely respond to the letter, or the petitioner fails to comply with all outstanding requirements, then the Petition will not be further considered and the trademark expungement proceeding will not be instituted.
Please note that if the petitioner’s domicile is outside of the United States, the petitioner must designate a U.S.-licensed attorney to prepare and submit the Petition on its behalf. But even if the petitioner is located within the U.S., it’s still a good idea to seek the advice and guidance of a trusted and knowledgeable trademark attorney to ensure that all requirements are fully and properly satisfied.
Once the Petition for Expungement is deemed complete, the USPTO will send a courtesy email notice to the owner of the trademark registration (referred to as the “registrant”). The notice informs the registrant that a Petition for Expungement has been filed and that it can be viewed online through TSDR. However, the registrant isn’t allowed to respond to this courtesy notice because, at this point, the trademark expungement proceeding hasn’t yet been formally instituted.
When is the Trademark Expungement Proceeding Formally Instituted?
After the courtesy notice is sent, the USPTO will thoroughly examine the Petition for Expungement to determine whether it establishes a prima facie case of non-use in connection with some or all of the products/services identified in the Petition. In other words, does the Petition include sufficient notice of the claimed non-use to allow the registrant to respond to it and potentially rebut it with competent evidence?
If the USPTO determines that the Petition for Expungement doesn’t establish a prima facie case of non-use as to any of the products/services identified in the Petition, then the trademark expungement proceeding won’t be instituted. On the other hand, if the USPTO determines that the Petition for Expungement does establish a prima facie case of non-use as to some or all of the products/services identified in the Petition, then the trademark expungement proceeding will be instituted as to those specific products/services. The USPTO’s determination as to whether or not to institute the proceeding is final and cannot be appealed.
The USPTO will then provide notice to both the petitioner and registrant of its determination.
What Happens After Institution?
If the USPTO determines that a trademark expungement proceeding should be instituted, it will send the registrant an office action. The registrant must then do one of the following:
- Provide evidence that the trademark is or was in use in connection with all of the products/services at issue in the expungement proceeding
- Voluntarily delete from the registration some of the products/services at issue in the expungement proceeding, and provide evidence that the trademark is or was in use in connection with the remaining products/services at issue in the expungement proceeding
- Voluntarily delete from the registration all of the products/services at issue in the expungement proceeding (this obviously isn’t an option if all of the products/services recited in the registration are at issue in the trademark expungement proceeding)
The registrant must respond to the office action within three months, but the registrant can request a one-month extension of the deadline (which requires payment of a fee). As with the petitioner, if the registrant’s domicile isn’t within the United States, the registrant must designate a U.S.-licensed attorney to prepare and submit the office action response (or extension) on its behalf.
The Trademark Expungement Decision
In the event the registrant fails to file any response to the office action whatsoever, then the registration will be canceled in whole (if all of the products/services recited in the registration were at issue in the expungement proceeding) or in part (if only some of the products/services recited in the registration were at issue in the expungement proceeding).
If the registrant responds to the office action and provides sufficient evidence of use as to all of the products/services at issue in the trademark expungement proceeding, then the proceeding is terminated and the registration remains active with no deletion of products/services from the registration.
If the registrant responds to the office action but fails to provide sufficient evidence that the mark is or was in use in connection with some or all of the products/services at issue in the expungement proceeding, then the USPTO will issue a final office action. The final action will include the examiner’s decision that the registration should be canceled as to some or all of products/services. The registrant then has the option of filing a request for reconsideration with the USPTO and/or an appeal to the Trademark Trial and Appeal Board (TTAB) within three months of the final action being issued. This deadline cannot be extended. Since filing a request for reconsideration doesn’t stay or extend the time for filing an appeal, it’s often good practice to file an appeal concurrently with the request for reconsideration.
If the registrant doesn’t file a request for reconsideration or an appeal, then the registration will be canceled in whole (if all of the products/services recited in the registration were at issue in the expungement proceeding) or in part (if only some of the products/services recited in the registration were at issue in the expungement proceeding). The same outcome would happen if the request for reconsideration and/or appeal is ultimately denied.
Do You Need Help With a Trademark Expungement?
I’m experienced US trademark attorney Morris Turek. If you have questions about the trademark expungement process, or perhaps require some assistance with filing or responding to a Petition for Expungement, I would be happy to provide you with a no-cost consultation. Feel free to call me at (314) 749-4059, email me at morris@yourtrademarkattorney.com, or send me a message through the contact form located below. I look forward to hearing from you soon.