In December of 2021, the United States Patent and Trademark Office (USPTO) issued some long-awaited updates to their processes and procedures that make it easier to challenge abandoned trademarks and make it faster to get marks registered.

Cancelling unused trademarks

The USPTO has created two brand new types of administrative proceedings to challenge trademarks that are no longer—or never were—used to identify goods and services. These new proceedings allow any party to challenge any good or service in a registration if the challenger can provide evidence that the trademark is not being used by the trademark holder. If they can prove this, then the trademark owner has 3 months to prove they are and were using their trademark as stated in the registration. Both new proceeding types make cancelling unused trademarks faster, more efficient, and cheaper.

First, the UPSTO created an expungement proceeding. Any party—i.e., not just holders of similar trademarks—may request cancellation of some or all the goods or services in a trademark registration if the trademark holder never used the trademark in commerce with those goods or services. Expungement proceedings must be brought between three and ten years after the trademark was registered.

Second, the UPSTO created a reexamination proceeding. Any party may request cancellation of some or all the goods or services in a trademark registration if the trademark holder did not begin using the trademark in commerce with those goods or services on the date that the trademark holder claimed to have begun using it. This new proceeding is especially useful to remove trademark squatters from the federal register. Reexamination proceedings must be brought within five years after registration.

Expediting applications

Alongside the two new cancellation proceedings, the USPTO also instituted new rules that may speed up the process of registering trademarks. When the USPTO has an issue with an application that requires a response from the applicant, it issues what’s called an office action. Presently, applications have 6 months to respond to an office action. Starting December 1, 2022, applicants will only have 3 months to respond to office actions, though they may request a three-month extension for a $125 fee. This will speed up the process for pending applications.

These new rule changes are awesome tools for trademark owners and applicants. However, by speeding up the application process and streamlining certain opposition proceedings, it is more vital than ever to consult a knowledgeable trademark attorney before deciding to file for federal trademark protection. Let our experienced attorneys guide you through the brand-building process by contacting us at 855-473-8474, or submitting a form here through our online referral service. 

The Expungement Proceeding: What Challengers Need to Prove

Trademark expungement proceedings allow any party — including those who have no competing trademark — to petition the USPTO to cancel some or all goods and services in a registration on the ground that the registered mark was never used in commerce with those goods or services. The statutory basis is 15 U.S.C. § 1066a, added by the Trademark Modernization Act of 2020. To succeed in an expungement proceeding, the petitioner must provide evidence establishing a prima facie case that the mark was never used in commerce with the identified goods or services. The trademark registrant then has the burden of rebutting by submitting specimens of use demonstrating actual use in commerce.

The temporal restriction is important: expungement proceedings must be filed between three and ten years after the trademark’s registration date. This three-year waiting period exists to allow registrants time to launch products. The ten-year cap creates urgency for parties who discover “deadwood” registrations blocking their own trademark applications — they must act before the registration ages out of expungement eligibility. Once outside the window, the traditional Inter Partes cancellation proceeding before the Trademark Trial and Appeal Board remains available, but it requires the petitioner to have standing, typically by demonstrating likelihood of damage from the registration.

Reexamination Proceedings: Targeting False Use Claims

Trademark reexamination proceedings, established under 15 U.S.C. § 1066b, target a narrower but common problem: trademark registrations where the registrant claimed to be using the mark as of a specific date — either the filing date for a use-in-commerce application or the statement of use date for an intent-to-use application — but was not actually using the mark in commerce on that date. Like expungement, reexamination is available to any party and targets specific goods or services within the registration rather than the entire registration.

The five-year filing window for reexamination is shorter than for expungement, creating even greater urgency for challengers. A party that discovers a competitor obtained registration based on a fraudulent or inaccurate use date has five years from registration to bring a reexamination challenge. After that window closes, the challenger must proceed through traditional TTAB cancellation, which has higher standing requirements and is generally more expensive and time-consuming.

Strategic Uses: Clearing the Register for New Applications

Expungement and reexamination are powerful tools for companies that have received office actions citing prior registrations as potential bars to registration of their own marks. Before the Trademark Modernization Act, a company in this position had limited options: file a TTAB cancellation petition (expensive and slow), negotiate with the registrant, or attempt to navigate around the blocking registration. Now, if the blocking registration covers goods or services for which the mark is not actually being used, an expedited administrative challenge can clear the path.

These proceedings are also valuable for companies entering a new market or launching a new product line who find that their preferred mark is registered but apparently unused. Conducting a use investigation — including reviewing the registrant’s website, retail presence, and any available market data — before filing a challenge is essential. A successful expungement or reexamination that eliminates the blocking goods or services can transform a refusable trademark application into a registrable one without the delay and expense of full TTAB proceedings.

The Compressed Office Action Response Period: What It Means for Applicants

The Trademark Modernization Act’s reduction of the office action response period from six months to three months — with a paid three-month extension available — has significant practical implications for trademark applicants. An office action that might previously have allowed six months for counsel to gather use evidence, locate specimens, or negotiate with a cited registrant now requires a response in three months or the application goes abandoned. The extension fee is $125 per class of goods or services, making multi-class applications more expensive to maintain in prosecution.

The compressed timeline makes early engagement of experienced trademark counsel even more critical. Waiting until an office action arrives to retain an attorney often means that the attorney has less time to assess the situation, gather evidence, and draft a thorough response than was previously available. Companies that file trademark applications on their own and then receive complex office actions — citing likelihood of confusion with multiple prior registrations or raising descriptiveness refusals — can find themselves in a difficult position with an abbreviated response window.

Contact Revision Legal for Trademark Expungement and Prosecution

The new USPTO proceedings created by the Trademark Modernization Act present significant strategic opportunities — but also require knowledgeable trademark counsel to use effectively. Whether you need to challenge a blocking registration through expungement or reexamination, defend your own registration against a challenge, or navigate the compressed prosecution timeline for a new application, Revision Legal’s trademark attorneys are ready to help. Call us at 231-714-0100 or visit our contact page. You can also explore our trademark services page for additional information about how we protect and enforce trademark rights.