USPTO Update:TMA Expungement and Reexamination Proceedings
Alt Legal Team | March 14, 2022
Special thanks to Katherine Markert of Markert and Cominolli PLLC for lending her insight to this article.
The Trademark Modernization Act (TMA) created two new ex parte procedures, expungement and reexamination, to challenge registrations for nonuse. The TMA Final Rule went into effect on December 18, 2021 and just a few days later on December 21, the USPTO received the very first petition for expungement.
The USPTO has a webpage tracking all of the expungement and reexamination proceedings received. While at this time, the USPTO has not issued rulings to expunge or reexamine any marks, the Director has begun initiating and denying certain petitions. If you are considering filing an expungement or reexamination procedure, the USPTO’s page is an excellent resource to review. You can look to see what petitions have been successfully initiated and what evidence was required to make a prima facie case. Additionally the USPTO has published some tips and best practices (expand the “Limitations of proceedings” and “Best practices” sections.)
This article will discuss the nature of the proceedings that have been filed and will also examine why certain petitions have been accepted and why others have been denied.
Have you filed an expungement or reexamination proceeding? We’d love to hear from you to learn about your process! Please contact Saryn Koche, Marketing Specialist: [email protected]. We’ll continue to follow expungement and reexamination proceedings before the USPTO. In the next 3 months, the first rounds of Office Action responses will be due so we expect to see some final determinations made at that time.
Additional Alt Legal Resources:
- How to File an Expungement or Reexamination Proceeding: Step-by-Step TEAS Form Guidance
- USPTO Webinar SummaryInsight into TMA Nonuse Cancellation Petitions
The First Petition to be Filed
On December 21, 2021, the USPTO received the first petition for expungement. It was filed by Eric Perrott of Gerben Perrott PLLC in Washington, D.C. In the petition, Perrott indicated that he discovered the mark GALAVAVA, as used in connection with various types of floor coverings, while conducting research for an academic article about fake specimens. He noticed that the image supplied as a specimen was a modified version of a Getty Images stock photo.
Interestingly, in this case, after Perrott filed his petition, the USPTO Director instituted another expungement proceeding against the same registration. In the petition, the Director included additional goods that Perrott did not initially include in his petition for expungement. This is a prime example of how the TMA now allows the USPTO to institute proceedings against registered trademarks and work to protect the integrity of the register.
Note that the USPTO provides specific guidance on its tips and best practices page on what must be shown in a petition relying on digitally altered specimens to demonstrate nonuse. The USPTO specifically mentions that in addition to evidence showing the specimen was digitally altered, the petitioner must also conduct a reasonable investigation and provide evidence supporting it.
What has been filed so far?
As of March 14, 2022, the USPTO reports that there have been 48 expungement and reexamination proceedings filed (28 expungement and 20 reexamination proceedings). The USPTO has taken action on 16 of the filings. It instituted proceedings and issued non-final office actions on 12 of the petitions, allowing the respondents to reply to the petitions. There were four petitions that were denied, two of which are described in detail below.
Most of the proceedings were filed by US-based petitioners, however there were at least six international petitions filed by petitioners located in Canada, Denmark, Switzerland, and Japan, all represented by US counsel. Note that foreign-domiciled petitioners are required to obtain US counsel in order to file a petition.
Also, note that the petitions do not have to identify the petitioner. Many of the petitions identify the attorney as the petitioner so that the actual interested party isn’t named. However, the Director may require the attorney to provide the client’s identity.
Questions of Standing
Under the TMA, “any person” may file an expungement or reexamination proceeding, meaning that there is no standing requirement for the petitioner. Therefore, we can expect to see filings for a variety of reasons, including from business owners who are seeking to clear the way to register their own marks, as well as business owners looking to clear the register of similar marks to avoid dilution and/or tarnishment. It also seems likely that we’ll see a number of petitioners filing for expungement or reexamination after an examiner issues an office action, citing §2(d) likelihood of confusion, and the applicant finds that the registration is potentially eligible for expungement or reexamination.
Of course, with no standing requirement, this could make way for harassing or malicious filers. However, the Director’s decisions in expungement and reexamination proceedings are final and non-renewable, which will hopefully put a quick stop to these sorts of filings. Also, petitioners only have one chance to file an expungement proceeding with respect to any particular goods/services, so this will prevent undue harassment. If the registrant is able to show use of the mark and overcome the expungement proceeding, the petitioner may subsequently file a reexamination proceeding against the same goods/services identified in the expungement proceeding if they believe that the registrant will be unable to prove use at the time of filing, as required by a reexamination proceeding.
The good news is that since the USPTO began accepting expungement and reexamination proceedings, generally, the filings appear to be business-motivated. Most of the proceedings appear to have been filed by interested third parties, namely competitors or similarly-named businesses, who want to clear the register of particular marks for business reasons and/or to avoid dilution on the register.
Timing
As a reminder, petitions for expungement can be filed any time between 3-10 years following registration and petitions for reexamination can be filed within the first 5 years of registration. Until December 27, 2023, the 10-year limit on expungement proceedings is on hold, allowing petitioners to file expungement proceedings against any registration that is 3+ years old.
Should you come across a scenario where your client’s applied-for mark has been refused and the examiner cites §2(d) likelihood of confusion with a registered mark, you may be able to file an expungement proceeding if the registration is at least 3 years old or a reexamination proceeding if the registration is less than 5 years old. Should the registration be “younger” than 3 years and you believe the mark may be eligible for expungement, you’ll have to either wait for the 3rd year anniversary of the registration OR you may file a cancellation proceeding if relevant.
Reexamination Proceeding – Accepted
An example of a reexamination proceeding where a petitioner successfully demonstrated a prima facie case was for the mark WATERBIRD. The petitioner supplied a 4-page petition explaining the nonuse investigation and demonstrating that it was “reasonable” along with a factual statement supporting cancellation. The petitioner also included an index of the evidence to support reexamination which is comprised of printouts from Instagram and Facebook and a website with details about a podcast. In the podcast, the registrant claimed that the business was in Virginia only (demonstrating intrastate commerce only) and has been in existence since September 2019. The petitioner tracked the registrant’s social media posts over the relevant time period, noting when the registrant posted about selling its goods in different states, demonstrating interstate commerce. With the evidence submitted, the petitioner showed that the registrant did not have interstate commerce (that is, use in commerce) as of the relevant date. The USPTO accepted this petition and has issued a non-final office action whereby the registrant must demonstrate use in commerce as of the relevant date, namely, the deadline for filing the statement of use. The registrant may alternatively delete certain goods (which is not relevant here as deleting the goods would cancel the registration: Distilled spirits; Prepared alcoholic cocktail) or the registrant may surrender the registration.
In sum and practice tips: Here, the petitioner was able to demonstrate nonuse by showing that the registrant had not engaged in interstate commerce. Looking back on a registrant’s social media and historical interviews, articles, etc. is a helpful way to demonstrate nonuse.
Expungement Proceeding – Accepted
An example of an expungement petition where a petitioner successfully demonstrated a prima facie case was for the mark SURFSTAR WAKE & Design. The petitioner provided a detailed explanation of the reasonable investigation that it conducted along with 17 pieces of evidence comprised of:
- Evidence from Wayback Machine showing the registrant’s webpage at a defined point in time
- Printouts from social media sites including Facebook and Instagram
- Printouts from YouTube
- Printouts from Google searches
The petitioner claimed that the evidence shows that the registrant used the mark in connection with a particular boat part (a wake-shaping device) but not the boat part as described in the registrant’s listing of goods (a wakeboard tower). The petitioner provided evidence showing that the registrant does not sell wakeboard towers on its Facebook and Instagram pages, which are apparently its main channels for sales. Taking into account this evidence, the USPTO accepted the petition and has issued a non-final office action requiring that the registrant demonstrate use in commerce prior to the filing date of the petition for expungement (January 13, 2022). The registrant may alternatively delete certain goods. But as with the reexamination proceeding discussed previously, this is likely not a relevant course of action as the only goods listed are: Boat parts, namely, wakeboard towers. Deleting these goods would cancel the registration.
In sum and practice tips: Here, the petitioner based its nonuse argument on the fact that the registrant claimed to be using the mark in connection with a particular type of boat part, namely, a wakeboard tower, but it was using the mark in connection with a different type of boat part. The petitioner demonstrated nonuse by looking at historical social media records, Wayback Machine archives, and general Internet and YouTube searches. As with the prior-mentioned accepted petition for WATERBIRD, social media accounts are clearly excellent sources for providing historical information about use/nonuse straight from the registrant themselves.
Why have petitions been denied?
As mentioned, the USPTO has considered 16 of the 47 proceedings filed, and of those 16 proceedings, it has denied just four of them. This article will describe the first two petitions that were denied.
A petition for expungement was denied for failure to prove a prima facie case. In this case, a law firm, Haug Partners, LLP, filed a petition for expungement with reference to the registration SPECIAL FORCES, used in connection with watches. The petitioner claimed that the mark had never been used in commerce in connection with the cited goods. As evidence to support the claim, the petitioner submitted the specimens on file and claimed that the specimens “appear to consist of labels or tags bearing the Subject Mark but unaccompanied by any watch or other goods.” The petitioner also provided TSDR records of a cancellation proceeding brought by Invicta Watch Company of America in which Invicta claims that the mark was never used in commerce in connection with the cited goods. The petitioners also provided Google search results of the registrant and mark and demonstrated that none of the results showed the mark used in connection with watches. Additionally, the petitioner provided a print out of what it believed to be the registrant’s website, showing no sign of watches being sold and no sign of the brand SPECIAL FORCES. The petitioner also stated that it had searched the Wayback Machine and eBay showing the same. Petitioner stated that they performed a reasonable investigation of nonuse.
Before the Director had a chance to issue a determination as to whether the petitioner had demonstrated a prima facie case for nonuse, the petitioner and the registrant filed a joint petition to withdraw the petition, claiming that the initial petition was filed as a negotiation tactic. It’s important to note that on USPTO’s tips and best practices page, it clearly states that petitions cannot be withdrawn. If the petitioner proves a prima facie case, the proceeding will go forward between the registrant and the USPTO regardless of whether the petitioner retains an interest in being involved.
However, soon after the request for withdrawal was filed, the USPTO issued a decision that it had decided not to take action on the petition and institute an expungement proceeding. So in this case, regardless of their request for withdrawal, the petitioner failed to demonstrate a prima facie case for expungement. The USPTO did not specifically identify why the petitioner had not demonstrated a prima facie case. One possible reason why the USPTO may have denied the petition is that the petitioner did not present historical evidence showing that the mark was never in use. The petitioner showed current printouts from the registrant’s website and provided only one historical screen grab from 2009, but it is unclear from the screengrab whether the mark may have been in use at that time. The petitioner claimed that the mark was not shown on the historical screen grab and that the registrant was not selling watches to consumers. But of course, the latter does not prove nonuse as commercial sales are considered use in commerce.
In sum and practice tips: It’s difficult to discern exactly why the USPTO determined that the petitioner had not demonstrated a prima facie case. The challenge for petitioners in expungement and reexamination proceedings is that they are charged with proving a negative – how do you show that a mark was never used in commerce? The USPTO notes on its tips and best practices page:
If you have evidence that a trademark is not in use at the time you file a petition, that evidence alone doesn’t establish a prima facie case of nonuse in the past. However, it can be part of a larger body of evidence that examiners will consider. Examiners are permitted to make reasonable inferences from the evidence.
Perhaps the USPTO simply needs to see more evidence to make the reasonable inference, namely, additional searches on other channels besides Wayback Machine and eBay, showing no matches for the registered mark used in connection with the cited goods. It is important to provide evidence of searches of the trademark showing no results. In this scenario, the petitioner may need to search vintage watch websites and show no matches for the mark or call watch dealers to inquire about the brand and registrant. Where the petitioner is trying to demonstrate a negative in a historical context, perhaps a professional investigation is worthwhile. Note that petitioners only have one chance to file an expungement proceeding as determinations are final and non-reviewable, so they must set forth their best evidence on the first try.
Katherine Markert, an attorney representing the petitioner in an expungement proceeding for the mark BIBI (which was recently instituted) confirms that proving a negative is challenging:
Drafting a petition for expungement is not easy because you need to provide evidence to show a prima facie case of a negative! The types of evidence a petitioner will need to collect varies depending on the nature and type of goods and services in the registration. A petitioner should consider the common channels of trade for the goods and services and look to those channels of trade for evidence of non-use. For example, in the context of a registration for goods, useful evidence can include current and archived website captures from common channels of trade showing the absence of the registrant’s goods.
What other proceedings were denied?
Another proceeding that was denied for failure to show a prima facie case was a reexamination petition filed by a pro se, non-attorney petitioner. The petitioner, John Damici, submitted a petition for reexamination in reference to the registration THE COOP, used in connection with restaurant services. The petitioner claimed:
I am the owner of a food truck called The Coop in Connecticut. A restaurant a couple of towns over has just changed its name to The Coop with the same brand colors as well as a similar logo and menu to my business. I am attempting to own the primary class trademark for The Coop in order to protect my business and brand.
As evidence, the petitioner submitted PDFs of Google and Yelp listings showing that the business THE COOP is closed, along with the TSDR record. The petitioner also claimed in his statement that the registrant’s website is no longer active, the business phone number is no longer in service, the registrant is no longer listed at the address, and that the last review he located was from 2017. The USPTO determined that this evidence was insufficient to prove a prima facie case.
In sum and practice tips: This result is a cautionary tale – this petitioner attempted to file on his own and made some mistakes. First, he filed a reexamination proceeding when the grounds were not met. In this case, it appears that the mark THE COOP was used in commerce, but it simply was no longer in use. Reexamination proceedings are meant to target registrations where the mark was not in use as of the relevant date on the application. Additionally, he erred in providing statements to support his claims and not providing any evidence to support those findings.
How are practitioners handling pending cancellation proceedings along with the new expungement and reexamination proceedings?
At least one of the new filings was submitted after the attorney had previously filed a cancellation proceeding. Attorney Katherine Markert filed a petition for expungement for the mark BIBI had filed a cancellation proceeding for the same mark in 2020 which is currently pending. Katherine explained,
“In 2020 when the cancellation action was filed there was no other option for removing deadwood from the registry. Our options for challenging the registration were simply more limited at that time. The expungement proceedings expand the available tools in the toolbox for certain cases. Petitioners should evaluate with counsel if filing an expungement proceeding during the pendency of a cancellation proceeding provides advantages in their specific case. Expungement proceedings are designed to be a more direct route to remove deadwood and at a lower cost to the petitioning party.”
We asked Katherine about strategy considerations when determining when it makes sense to pursue expungement in light of a pending cancellation proceeding. She provided the following insight:
“Due to the brand-new nature of expungement proceedings, I expect, at least in year one, to see more overlap between pending cancellation actions before the TTAB and newly filed expungements initiated against the same registrations. This will occur because the expungement proceeding is intended to be a more direct, economical, and efficient process to clear the registry of deadwood. Petitioners currently involved in pending cancellation proceedings may find, depending on how far along the cancellation proceeding is, that pivoting to the expungement proceeding is a worthwhile expenditure to obtain a quick cancellation of the challenged registration. In general terms, cancellation proceedings are a form of litigation and in U.S. practice, litigation is rarely direct, economical, or efficient unless the opposing party defaults.”
We also asked Katherine about when it makes sense to file a cancellation or expungement proceeding and she provided this helpful response:
“The grounds available to challenge the registration play a meaningful role in determining whether to file a cancellation or expungement action. Expungement proceedings are only proper when the basis for the petition is that the registered mark has never been used in U.S. commerce in connection with some or all the goods and services listed in the registration. This means, for example, that an expungement proceeding is not an available tool when the ground for challenging the registered mark is priority and likelihood of confusion. Cancellation proceedings will continue to be an important and valuable tool for trademark holders and practitioners.”