Trademark Modernization Act

What is a Trademark Expungement Petition and How Does It Work?

A trademark expungement petition is a relatively new procedure that allows third parties to challenge the validity of a registered trademark based on non-use of the mark in commerce. The purpose of an expungement petition is to remove goods or services from a registration that the registrant has never used or intended to use with the mark. This way, the trademark register can be more accurate and reflect the actual use of trademarks in the marketplace.

How to Conduct Reasonable Investigations for Expungement & Reexamination Proceedings

The Trademark Modernization Act of 2020 (TMA) introduced two new ex parte procedures to challenge unused registered trademarks: expungement and reexamination. Expungement allows anyone to petition the USPTO to cancel a registration if the mark was never used in commerce for some or all of the goods or services. Reexamination allows anyone to petition the USPTO to cancel a registration if the mark was not in use in commerce as of a certain date, such as the filing date or the amendment to allege use date.

Both procedures require the petitioner to conduct a “reasonable investigation” and present a prima facie case that the mark was not in use in commerce as claimed by the registrant. But what does a reasonable investigation entail? And how can you submit convincing evidence to support your petition? In this blog, we will share some tips and best practices from an investigator’s perspective.