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.
An expungement petition can be filed against any federal trademark registration, including registrations for collective and certification marks. However, the petition can only be filed during certain time periods, depending on the age of the registration. Because the expungement process is still new, an expungement petition can currently be filed against any registration that is at least three years old. However, after December 27, 2023, an expungement petition will only be able to be filed against trademarks that have been registered for at least three but not more than ten years.
To file an expungement petition, the petitioner must use the USPTO Trademark Electronic Application System and pay a fee of $400 per international class. The petitioner must also identify the targeted registration number, the basis for the petition (expungement), and provide evidence that the mark has never been used in commerce on some or all of the goods or services covered by the registration. The petitioner does not need to have any interest or standing to file an expungement petition.
Once an expungement petition is filed, the USPTO will review it and determine whether it meets the requirements. If so, the USPTO will institute an expungement proceeding and notify the registrant of the challenged goods or services. The registrant will then have three months to respond to the notice and submit evidence of use of the mark in commerce on or before the relevant date for each challenged good or service. The relevant date is either the filing date of the application (if based on use in commerce) or the date that an amendment to allege use was filed or a statement of use was due (if based on intent to use).
If the registrant fails to respond or fails to submit sufficient evidence of use, the USPTO will issue a final decision and cancel some or all of the goods or services from the registration. If the registrant submits evidence of use, the USPTO will examine it and determine whether it meets the legal standards. If not, the USPTO will issue an office action and give the registrant another opportunity to respond. If the registrant overcomes all issues raised by the USPTO, then the expungement proceeding will be terminated and no goods or services will be cancelled from the registration.
The expungement proceeding is conducted by USPTO examiners and does not involve any participation from the petitioner after filing. The petitioner cannot withdraw or amend an expungement petition once it is filed. The petitioner also cannot appeal or request reconsideration of any decision made by the USPTO in an expungement proceeding.
An expungement proceeding is different from a cancellation proceeding before the Trademark Trial and Appeal Board (TTAB), which is a more formal and adversarial process that requires standing, pleadings, discovery, trial, and appeal. An expungement proceeding is also different from a reexamination proceeding, which is another new procedure that allows third parties to challenge a registered trademark based on non-use as of a specific date.
An expungement petition is a powerful tool that can help third parties clear away unused trademarks from the register and free up space for new brands. However, it also imposes a burden on registrants to prove their use of their marks in commerce or risk losing their rights. Therefore, both trademark owners and potential challengers should be aware of this new procedure and its implications for their trademark strategy. Contact us to learn more about this process or about trademarks in general.