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.
What is a reasonable investigation?
A reasonable investigation is a diligent and thorough search for any potential use of the mark in commerce by the registrant for the relevant goods or services. The scope and depth of the investigation may vary depending on the circumstances, such as the nature of the goods or services, the availability of sources, and the time and resources available. However, some general steps that a reasonable investigation should include are:
Searching online databases and websites for any evidence of use or offers to sell by the registrant, such as product listings, advertisements, reviews, press releases, social media posts, etc.
Searching offline sources for any evidence of use or offers to sell by the registrant, such as trade publications, catalogs, directories, trade shows, etc.
Searching public records for any evidence of business activity or licensing by the registrant, such as corporate filings, tax records, trademark assignments, etc.
Contacting the registrant or its representatives to inquire about any use or offers to sell by the registrant, such as sending emails, letters, phone calls, etc.
Contacting third parties who may have knowledge or information about any use or offers to sell by the registrant, such as customers, suppliers, distributors, competitors, industry experts, etc.
The investigation should cover all relevant dates and geographic areas where the mark may have been used in commerce. The investigation should also be conducted in good faith and without any intent to deceive or mislead the USPTO or the registrant.
How to submit convincing evidence?
After conducting a reasonable investigation, you should submit relevant and legible evidence to support your petition. The evidence should show that you have searched multiple sources and methods to uncover any potential use of the mark in commerce by the registrant. The evidence should also show that you have not found any such use or that any such use was insufficient or improper.
Some types of evidence that you can submit are:
Screenshots of websites or databases showing no results or negative results for the mark or the registrant
Copies of publications or records showing no mention or reference to the mark or the registrant
Copies of correspondence or statements from the registrant or third parties confirming no use or offers to sell by the registrant
Affidavits or declarations from yourself or third parties attesting to your investigation and findings
All screenshot evidence must be time/date stamped and include the URL of the source. You can use tools like Snagit, Page Vault, or Nimbus to capture screenshots with these features. You must also supply an itemized index of evidence with a brief description of each piece of evidence and its relevance to your petition.
Here is an example of an index of evidence:
Index of Evidence
Screenshot of Amazon.com search results for “XYZ” showing no products sold by ABC Inc. (the registrant) under its registered mark XYZ for clothing (the relevant goods). Date: 01/01/2022. URL: https://www.amazon.com/s?k=XYZ&i=fashion
Screenshot of Google search results for “ABC Inc.” showing no website or online presence for ABC Inc. Date: 01/01/2022. URL: https://www.google.com/search?q=ABC+Inc.
Screenshot of “ABC Inc.’s” fake or digitally altered specimens from their application. Date: 01/01/2022. (*note that this evidence is not sufficient on it’s own, but could be used in conjunction with additional evidence)
Affidavit from Jane Doe (the petitioner) detailing her reasonable investigation into ABC Inc.’s use of its registered mark XYZ for clothing and her conclusion that ABC Inc. has never used its mark in commerce for clothing.
Conducting a reasonable investigation and submitting convincing evidence are essential to demonstrate a prima facie case for expungement or reexamination. This is just a quick overview of the process, and we recommend working with an experienced trademark attorney should you find yourself needing to initiate a petition for expungement or reexamination. If you need any assistance with your investigation or evidence, feel free to contact us.