What is a Trademark Reexamination Proceeding?

If you own a trademark, you know how important it is to protect your rights and prevent confusion in the market. But what if someone challenges your trademark registration on the grounds that you did not use it in commerce as claimed? Or what if the USPTO itself initiates a review of your registration to verify your use of the mark? In either case, you may face a trademark reexamination proceeding.

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If you own a trademark, you know how important it is to protect your rights and prevent confusion in the market. But what if someone challenges your trademark registration on the grounds that you did not use it in commerce as claimed? Or what if the USPTO itself initiates a review of your registration to verify your use of the mark? In either case, you may face a trademark reexamination proceeding.

A trademark reexamination proceeding is a new procedure that was introduced by the Trademark Modernization Act of 2020 (TMA). It allows the USPTO to cancel some or all of the goods or services in a use-based registration if the evidence shows that the trademark was not in use in commerce on or before a relevant date. The relevant date depends on whether the application was filed based on actual use or intent to use.

A trademark reexamination proceeding can be requested by any third party who believes that a registered mark was not in use in commerce as claimed, or by the USPTO Director on his or her own initiative, if there is a prima facie case of nonuse. The proceeding must be requested within the first five years after registration.

In this blog post, we will explain how to file a petition for reexamination, what evidence to submit, how to respond to office actions, and how to appeal the decision. We will also provide some tips and examples to help you navigate this process successfully.

How to File a Petition for Reexamination

To request a trademark reexamination proceeding, you need to file a petition with the USPTO using the online form. You need to identify the registration number, the owner’s name, and the goods or services that you want to challenge. You also need to provide evidence that supports your claim of nonuse.

The evidence should show that the trademark was not in use in commerce on or before the relevant date. The relevant date varies depending on whether the original application was filed as in use or intent to use:

  • For an application filed under Section 1(a) based on actual use, the filing date of the application;

  • For an application filed under Section 1(b) based on intent to use, the filing date of the amendment to allege use or the statement of use, whichever is earlier.

The evidence can include:

  • Declarations or affidavits from persons with personal knowledge of the facts;

  • Copies of advertisements, catalogs, brochures, websites, or other materials that show how the mark was used or not used in commerce;

  • Copies of invoices, receipts, shipping documents, or other records that show sales or shipments of the goods or services;

  • Copies of registrations, applications, or other documents from foreign countries that show use or nonuse of the mark;

  • Copies of discovery responses, depositions, transcripts, or other documents from litigation involving the mark;

  • Any other relevant evidence that demonstrates nonuse.

The petition must include a verified statement that:

  • The petitioner believes that the registered mark was not in use in commerce on or before the relevant date;

  • The petitioner has conducted a reasonable investigation into the facts;

  • To the best of the petitioner’s knowledge and belief, no information or evidence contrary to the petition has been withheld.

The petition must also include a fee of $400 per class of goods or services challenged.

How to Respond to Office Actions

After receiving a petition for reexamination, the USPTO will review it and determine whether it establishes a prima facie case of nonuse. If so, the USPTO will institute a reexamination proceeding and notify the registrant. The registrant will have two months to respond to the notice and submit evidence of use.

The evidence of use should show that:

  • The trademark was in use in commerce on or before the relevant date;

  • The trademark was used in connection with all of the goods or services challenged;

  • The trademark was used as registered or with minor changes that do not alter its distinctive character.

The evidence of use can include:

  • Specimens of use that show how the mark appears on or with the goods or services;

  • Declarations or affidavits from persons with personal knowledge of the facts;

  • Copies of advertisements, catalogs, brochures, websites, or other materials that show how the mark was used in commerce;

  • Copies of invoices, receipts, shipping documents, or other records that show sales or shipments of the goods or services;

  • Any other relevant evidence that demonstrates use.

Alternatively, the registrant can voluntarily delete some or all of the goods or services challenged from the registration.

If the registrant does not respond to the notice within three months, or if the response is insufficient to overcome the prima facie case of nonuse, the USPTO will issue a final decision canceling some or all of the goods or services challenged.

How to Appeal the Decision

If the USPTO issues a final decision canceling some or all of the goods or services challenged, the registrant can appeal the decision to the Trademark Trial and Appeal Board (TTAB) within three months of the date of the decision. The appeal must include a notice of appeal and a fee of $225 per class of goods or services appealed.

The TTAB will review the decision and the evidence on the record and issue a new decision affirming, reversing, or modifying the USPTO’s decision. The TTAB’s decision can be further appealed to the U.S. Court of Appeals for the Federal Circuit or a U.S. District Court.

Tips and Examples for Trademark Reexamination Proceedings

Here are some tips and examples to help you with trademark reexamination proceedings:

  • Choose your target carefully. Before filing a petition for reexamination, make sure that you have a strong case of nonuse and that you can support it with solid evidence. Do not file frivolous or malicious petitions that may expose you to sanctions or liability.

  • Be specific and concise. When filing a petition or responding to a notice, identify the specific goods or services that you are challenging or defending and provide clear and relevant evidence that shows use or nonuse. Do not include unnecessary or irrelevant information that may confuse or distract the USPTO or the TTAB.

  • Be proactive and timely. Whether you are a petitioner or a registrant, do not wait until the last minute to file your petition or response. The USPTO and the TTAB have strict deadlines and will not accept late filings unless there is a good cause. If you need more time, you can request an extension of time before the due date.

  • Seek professional help. Trademark reexamination proceedings can be complex and challenging, especially if you are not familiar with trademark law and practice. If you are unsure about how to proceed, you may want to consult a trademark attorney who can advise you on your rights and obligations and represent you before the USPTO and the TTAB.

Conclusion

A trademark reexamination proceeding is a new way to challenge or defend a trademark registration based on use in commerce. It can be an effective tool to clear unused trademarks from the register or to protect your trademark rights from invalid claims. However, it also requires careful preparation and execution to succeed.

If you want to learn more about trademark reexamination proceedings or other aspects of trademark law, contact us today.