The Trademark Modernization Act (TMA) was signed into law in December 2020. The TMA established two new, accelerated methods for canceling trademark registrations before the USPTO: expungement proceedings and re-examination proceedings. The purpose of these ex parte procedures is to address the recent increase of trademark registrations obtained unlawfully through fictitious or erroneous claims of usage. They are also projected to provide petitioners a far quicker, more efficient, and less expensive alternative to inter partes cancellation procedures before the Trademark Trial and Appeal Board (TTAB). The USPTO’s final regulation allows requests for expungement or re-examination to be submitted starting December 27, 2021.
Expungement
Any party may file a petition with the USPTO to have a trademark registration that has never been used in commerce expunged. Between three and ten years following the registration date for a contested registration, an expungement petition may be filed. The ten-year limit will not take effect until December 27, 2023, giving earlier registrants a two-year grace time to be expunged. An expungement petition can be used to have any or all of the products or services listed in the registration removed.
Re-examination
Any party may request that the USPTO reconsider a trademark registration that was not in use in commerce on or before a specific relevant date (e.g., the date a use-based application was filed, or the filing date for an amendment to allege use for an application initially based on intent-to-use). Re-examination petitions must be filed within five years of the challenged registration’s registration date, and they can be used to remove any or all of the products or services included in the registration.
A petitioner for expungement or re-examination must identify the registration and the goods or services alleged to have never been used or not used as of the relevant date, show that the petitioner conducted a “reasonable investigation” into the registrant’s non-use, and pay a $400 filing fee per class of goods or services being challenged.
Any third party can file a petition; it does not have to be the true party in interest. Although the USPTO can require disclosure of the interested party in certain instances, the opportunity to remain anonymous is a distinct benefit over a cancellation action in which the interested party must be disclosed.
If the USPTO determines that the petitioner has established a prima facie case of non-use, the registrant will be notified of the expungement or re-examination action. The petitioner’s involvement in the procedure ends at that point, and the registrant has three months to present evidence of use or excusable non-use of the disputed trademark. The registration will be terminated in whole or in part if the registrant fails to react promptly or show adequate evidence of use. The USPTO’s judgment is not reviewable if an expungement or re-examination petition is failed, but the petitioner may still seek a cancellation process before the TTAB against the disputed registration.
Overall, the new expungement and re-examination procedures provide trademark owners with an expedited and anonymous method of canceling fraudulent registrations that could otherwise be used as a basis for refusal of their trademark applications without having to go through the time, expense, and risk of a TTAB cancellation action.
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