You may be able to move the USPTO to expunge or cancel a trademark registration for not being commercially used in the U.S.
What is Expungement (and Reexamination) of Trademark Registration?
Virtually anyone can petition for an expungement of a registered trademark with the evidence of record supporting that the registered mark has never been used in commerce on or in connection with some or all of the goods and/or services recited in the registration.
Similarly, for registered marks that were not used at the time of filing or by the time provided for statement of alleged use, a petition for a reexamination can be filed with the corresponding evidence.
Either one is an ex parte proceeding before the USPTO, meaning once you establish that there is a prima facie case of non-use (see below), the registrant will need to prove otherwise.
The registration should be in between 3 and 10 years from the date of registration. However, till December 27, 2023, you can file for an expungement proceeding for a registration that is at least 3 years old, regardless of the 10-year limit.
What is a prima facie case?
It’s a legal term of art that requires a working knowledge regarding burden of proof in a legal proceeding. The more important thing is how to establish a prima facie case.
When you file a petition for an expungement or reexamination you must include evidence as follows:
a. The elements of the reasonable investigation of nonuse conducted, as defined under § 2.91(d), where for each source of information relied upon, the statement includes a description of how and when the searches were conducted and what the searches disclosed; and
b. A concise factual statement of the relevant basis for the petition, including any additional facts that support the allegation of nonuse of the mark in commerce on or in connection with the goods and services as specified in § 2.91(a);
- A clear and legible copy of all documentary evidence supporting a prima facie case of nonuse of the mark in commerce and an itemized index of such evidence.
What can be used as evidence?
As set forth in § 2.91(d)(2), appropriate sources of evidence and information for a reasonable investigation may include, but are not limited to:
- State and Federal trademark records;
- internet websites and other media likely to or believed to be owned or controlled by the registrant;
- internet websites, other online media, and publications where the relevant goods and/or services likely would be advertised or offered for sale;
- Print sources and web pages likely to contain reviews or discussions of the relevant goods and/or services;
• Records of filings made with or of actions taken by any State or Federal business registration or regulatory agency;
- The registrant’s marketplace activities, including, for example, any attempts to contact the registrant or purchase the relevant goods and/or services;
- Records of litigation or administrative proceedings reasonably likely to contain evidence bearing on the registrant’s use or nonuse of the registered mark; and
- Any other reasonably accessible source with information establishing that the mark was never in use in commerce (expungement), or was not in use in commerce as of the relevant date (reexamination), on or in connection with the relevant goods and/or services.
If you find a trademark registration that blocks your trademark’s registration or simply in the way of your commercial utilization of the trademark, it is definitely worth a look to see if the registration was legitimate and valid.
Also, the ex parte proceedings can be an effective way to respond to any claims against your trademark use or application based on a previous trademark registration, including a letter of protest, a TTAB opposition proceeding, and other legal disputes. The ex parte proceedings will suspend any actions before the USPTO and the TTAB.