In the latest phase of the implementation of the Trademark Modernization Act 2020, the United States Patent and Trademark Office (USPTO) will open two new ex-parte cancellation proceedings on 27 December 2021, called “trademark expungement” and “trademark re-examination.” Through these new avenues, third parties may now request cancellation of some or all of the goods and services claimed in trademark registration.
These new proceedings were created as part of the USPTO’s broader goal of eliminating overbroad or fraudulent registrations off of the crowded USPTO trademark register, but will affect all Markholders and applicants.
Exactly what is Trademark Expungement?
Expungement is a way to cancel trademarks that don’t actually qualify for trademark registration, but somehow were granted.
Expungement is an ex-parte proceeding which looks at whether the registration was ever actually in use. If a trademark registration was issued and not actually used for the type of good and service claimed in the registration, expungement is granted.
To institute the expungement proceeding, the complaining party must simply supply evidence of a “reasonable investigation” showing that the registered mark was never used for the goods and services identified in the petition. The Director will then, upon finding of a prima facie case, provide notice to the markholder. The markholder must provide evidence or use, or the mark will be terminated.
How do I file a petition for Expungement?
A petition for ex-parte expungement must:
(1) identify the registration;
(2) identify each good and service in the registration for which it alleges the mark was never in used “in commerce”;
(3) include a “verified statement” that the petitioner conducted a “reasonable investigation” to determine that the mark was never in use in commerce;
(4) provide supporting evidence; and
(5) include the required filing fee.
What marks are eligible for trademark expungement?
Expungement is available against *all* registered trademarks.
When can I file a for trademark expungement?
A third party may file for trademark expungement of a registered trademark between the 3rd and 10th years after registration. But note: Until Dec. 27, 2023, any trademark is fair game (think of it as “catchup time”).
What happens if someone files an expungement petition against my trademark?
If someone has filed a petition for trademark expungement against your trademark, do not ignore it. Failure to respond to all allegations in the petition will result in some or all of your registration’s cancellation.
Make sure your information with the USPTO is always up to date. This is how the USPTO will contact you if you need to respond to an expungement petition.
Second, you should contact a lawyer for assistance. This is a substantive allegation, almost like a lawsuit. You will need to procedurally address each issue to ensure your trademark is not cancelled.
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If you need help addressing an expungement action, please don’t hesitate to contact us at hello@cjfoxlaw.com.
