Partner
Basically, it has become clear over the last few years that there is a lot of “deadwood” among the trademarks that are officially registered with the US Patent & Trademark Office (“USPTO”). As a result, Congress passed the Trademark Modernization Act (“TMA”) to help the USPTO begin resolving the problem. Essentially, the TMA allows almost anyone to file proceedings to cancel trademarks that have never been used in interstate commerce or which have not been used in connection with some or all of the classes of goods/services for which the trademark was applied for. In general, a trademark must be used with at least one class of goods or services. But many applications seek registration for use with multiple classes of goods/services. But, in fact, in many cases, the trademark does not end up being used with all of the classes specified in the application. This presents a barrier to others who may want to use a similar trademark for those other classes of goods/services. The TMA was passed as an effort to resolve some of these problems.
Two new proceedings are now allowed pursuant to the TMA. First, any person may file an expungement proceeding where a registered trademark has never been used in commerce in connection with any goods or services. Second, a reexamination proceeding can be filed when a registered trademark is not being used with some of the classifications specified in the original application.
What is the process?
The first step is to file proper papers with the USPTO seeking expungement or a reexamination. The papers are filed electronically and there is a $400 filing fee. An expungement proceeding can be filed from three to 10 years after a trademark has been registered. However, the 10-year limitation does not go into effect until the end of 2023. Until that time, EVERY registered trademark — regardless of age — can be subject to an expungement proceeding. A reexamination proceeding can be filed almost immediately after registration but only up to five years after registration. The petitioner must support the filing with proper and extensive documentation showing non-use of the trademark. Evidence is required, not mere allegations.
Next, the USPTO will examine the filings to ensure the allegations are prima facie valid. If the USPTO determines that the proceedings are facially valid, then the owner of the trademark will be given an opportunity to respond in writing to the filings.
To defeat the claims of non-use, the owner of a registered trademark must present evidence of relevant use (or excusable non-use). In theory, this should be “easy” for the owner to prove. But, in practice, many owners may not respond. If the owner does not respond, then the trademark registration can be cancelled.
The trademark register maintained by the USPTO serves a critical notice function: it tells businesses what marks are already taken so they can avoid choosing a brand that infringes an existing registration. When the register is filled with marks that no one is actually using — often registered by foreign applicants who declared a bona fide intent to use the mark in US commerce but never followed through — it creates a false picture of what is actually available. Legitimate US businesses conducting trademark clearance searches encounter these unused registrations, conclude they cannot safely use certain marks, and either abandon good brand names or spend money on litigation to clear the path. The TMA’s expungement and reexamination procedures directly address this by providing an efficient administrative mechanism to remove non-use registrations without requiring full cancellation proceedings before the Trademark Trial and Appeal Board (TTAB).
An expungement proceeding targets registrations where the mark was never used in US commerce with any of the goods or services in the registration. To successfully petition for expungement, the petitioner must provide:
The standard for establishing a prima facie case is not onerous — the petitioner need not prove non-use conclusively. The petitioner only needs to present enough evidence to shift the burden to the registrant to demonstrate use. This makes it relatively accessible for businesses that encounter blocking registrations during clearance searches to challenge those registrations without incurring the full expense of TTAB cancellation proceedings.
Reexamination proceedings address a different but related problem: registrations where the trademark is genuinely used for some goods or services but not for all of the classes listed in the registration. For example, a registrant may have obtained a registration covering both Class 25 (clothing) and Class 18 (luggage and bags), but only actually sells clothing. A reexamination proceeding targeting Class 18 would require the registrant to provide evidence of use of the mark with luggage and bags — and if the registrant cannot, the registration will be limited to the classes actually in use.
Reexamination petitions must be filed within five years of the registration date. The five-year window is designed to catch registrations that were obtained based on declarations of use that overstated the actual scope of use at the time of registration, before those registrations age into incontestability and become significantly harder to challenge.
In addition to the expungement and reexamination procedures, the TMA made a significant change to trademark infringement litigation by restoring the rebuttable presumption of irreparable harm for preliminary injunction purposes. Before the TMA, the Supreme Court’s decision in eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006), had been applied by several circuits to eliminate the traditional presumption of irreparable harm in trademark infringement cases, requiring trademark owners to separately prove irreparable injury in addition to likelihood of success. The TMA, by amending 15 U.S.C. § 1116, restores the presumption: upon a finding of likely infringement, courts may presume irreparable harm — making it significantly easier for trademark owners to obtain emergency injunctions stopping infringement quickly.
Revision Legal’s trademark attorneys advise clients on trademark clearance, expungement and reexamination proceedings, and trademark infringement litigation under the TMA’s updated framework. If a blocking registration is preventing you from using or registering your mark, or if your registration is the subject of a challenge, contact us today.
Registering a trademark is one of the smartest investments you can make as a business owner. A trademark protects your brand, gives you exclusive rights to use your mark in commerce, and provides significant legal advantages — including a presumption of ownership and the ability to bring infringement claims in federal court. But many business […]
Read more about Six Important Trademark Questions Answered
The USPTO’s failure-to-function doctrine rejects trademarks that don’t identify a unique source. Learn what causes these refusals, why distinctiveness matters, and how to choose a stronger mark.
Read more about Trademark Failure to Function: Why the USPTO Rejects Trademarks and How to Avoid It
If another business has registered your trademark, you may still have legal options. Learn how first-to-use rights, USPTO oppositions, and common law claims can protect your brand.
Read more about Trademark Already Registered by Someone Else? Your Legal Options