In the world of intellectual property, ensuring that registered trademarks are actively used in commerce is essential. Trademark owners must regularly demonstrate that their marks are actively in use for the goods and services they’re registered for. However, the process of enforcing these requirements is evolving, thanks to new ex parte expungement and reexamination proceedings introduced as a more efficient and cost-effective alternative to contested inter partes cancellation proceedings at the Trademark Trial and Appeal Board (TTAB).

Why the new proceedings?

The ex parte expungement and reexamination proceedings supplement the existing administrative maintenance requirements for trademark registrations. Under previous rules, trademark owners were obligated to provide only one specimen of use in commerce for each class of goods or services when registrations were audited, and they had the liberty to choose which specimen to provide. The new procedures now allow any interested party to challenge the use of a specific good or service in a trademark registration by presenting compelling evidence that establishes a prima facie case of nonuse. The burden of proof then shifts to the registration owner, who must demonstrate that they were using the challenged goods or services in commerce on or before a specific relevant date.

Expungement proceeding

In an expungement proceeding, any party can request the cancellation of some, or all of the goods or services listed in a registration if the registrant has never used the trademark in commerce with those goods or services. This applies to registrations based on use in commerce, foreign registrations, or those under the Madrid Protocol.

There is a time limit for initiating an expungement proceeding, which must be requested between three and ten years after the registration date. However, until December 27, 2023, a proceeding may be requested for any registration at least three years old, irrespective of the ten-year limit.

Reexamination proceeding

A reexamination proceeding allows any party to request the cancellation of some or all the goods or services in a use-based registration if the trademark was not in use in commerce with those goods or services on or before a particular relevant date.

The relevant date in a reexamination proceeding depends on the history of the application:

• if the application was initially filed based on use in commerce and was not amended during examination to an intent-to-use basis, the relevant date is the filing date of the application.
• if the application was filed or amended to an intent-to-use basis, the relevant date is the date when an accepted amendment to allege use was filed, or the end date of the statement-of-use period for an accepted statement of use.

Like expungement, reexamination proceedings have a time limit. They must be requested within the first five years after registration.

In conclusion, the introduction of expungement and reexamination proceedings offers a more streamlined approach to ensuring the active use of trademarks in commerce. These procedures not only enhance the enforcement of trademark maintenance requirements but also provide a more accessible and cost-effective means for parties to challenge the validity of registered trademarks. As the intellectual property landscape continues to evolve, these new proceedings offer an important tool for trademark owners and interested parties alike.