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.
What Does a Petition for Reexamination Require?
Section 1716.02(b) of the Trademark Manual of Examining Procedure (TMEP) sets out all of the requirements for a “complete” submission of a Petition for Reexamination. I urge you to thoroughly review the requirements because once the USPTO deems the Petition to be “complete,” it cannot be amended for any reason and no additional arguments or evidence can be presented.
In the event the Petition for Reexamination doesn’t include all of the elements for a “complete” submission, then the USPTO will send a letter to the petitioner outlining what is missing. The petitioner must respond to the letter within thirty days by satisfying all outstanding requirements. If the petitioner doesn’t respond to the letter by the deadline, or if the petitioner doesn’t satisfy all outstanding requirements, then the Petition will not be further considered and the trademark reexamination proceeding will not be instituted.
Please be aware 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 domiciled within the United States, it’s still highly recommended to seek the assistance of an experienced and skilled trademark attorney to ensure that all requirements are properly met in their entirety.
Once the Petition for Reexamination 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 tells the registrant that a Petition for Reexamination has been submitted and that it can be accessed online through TSDR. However, the registrant isn’t permitted to respond to this courtesy notice since, at this point, the trademark reexamination proceeding hasn’t yet been officially instituted.
When is the Trademark Reexamination Proceeding Officially Instituted?
After the courtesy notice is sent, the USPTO will meticulously scrutinize the Petition for Reexamination to determine whether it establishes a prima facie case of non-use as of the relevant date in connection with some or all of the products/services identified in the Petition. Put differently, does the Petition include sufficient notice of the claimed non-use to permit the registrant to respond to it and possibly rebut it with competent evidence of use?
If the USPTO determines that the Petition for Reexamination doesn’t establish a prima facie case of non-use as to any of the products/services identified in the Petition, then the trademark reexamination proceeding won’t be instituted. Conversely, if the USPTO determines that the Petition for Reexamination 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 reexamination proceeding will be instituted as to those particular products/services. The USPTO’s decision to institute or not institute the reexamination proceeding is final and not appealable.
The USPTO will then send notice to both the petitioner and registrant of its decision.
What Happens After the Proceeding is Instituted?
If the USPTO decides that a trademark reexamination 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 was in use as of the relevant date in connection with all of the products/services at issue in the reexamination proceeding
- Voluntarily remove from the registration some of the products/services at issue in the reexamination proceeding, and provide evidence that the trademark was in use as of the relevant date in connection with the remaining products/services at issue in the reexamination proceeding
- Voluntarily remove from the registration all of the products/services at issue in the reexamination proceeding (of course, this isn’t a viable option if all of the products/services recited in the registration are at issue in the trademark reexamination proceeding)
The registrant must file a response to the office action within three months, but the registrant can obtain 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 file the office action response (or extension) on its behalf.
The Trademark Reexamination Decision
If the registrant doesn’t file a response to the office action, then the registration will be canceled in whole (if all of the products/services recited in the registration were at issue in the reexamination proceeding) or in part (if only some of the products/services recited in the registration were at issue in the reexamination proceeding).
If the registrant responds to the office action and provides adequate evidence of use as of the relevant date in connection with all of the products/services at issue in the trademark reexamination proceeding, then the proceeding is terminated and the registration remains live with no removal of products/services from the registration.
If the registrant responds to the office action, but fails to provide adequate evidence of use as of the relevant date in connection with some or all of the products/services at issue in the reexamination proceeding, then the USPTO will issue a final office action. The final office 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 submitting 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. Because submitting a request for reconsideration doesn’t stay or extend the time for filing an appeal, it’s generally wise to submit an appeal along with the request for reconsideration.
If the registrant doesn’t submit 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 reexamination proceeding) or in part (if only some of the products/services recited in the registration were at issue in the reexamination proceeding). The same outcome would occur if the request for reconsideration and/or appeal is ultimately unsuccessful.
Cam I Assist You With a Trademark Reexamination?
I’m experienced US trademark attorney Morris Turek. If you have a few questions regarding the trademark reexamination process, or maybe need some help submitting or responding to a Petition for Reexamination, I’d be glad to provide you with a completely free consultation. Please call me at (314) 749-4059, send an email to morris@yourtrademarkattorney.com, or use the contact form located at the bottom of this page to send me a brief message. I look forward to hearing from you soon.