TMEP § 1716
Sections 16A and 16B of the Trademark Act, 15 U.S.C. §§1066a -1066b, allow the USPTO to cancel a registration, in whole or in part, for nonuse of a registered mark via ex parte expungement and reexamination proceedings.
In an expungement proceeding, the USPTO may cancel a registration if the evidence of record shows 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. 15 U.S.C. §1066a; 37 C.F.R. §2.91(a)(1).
In a reexamination proceeding, the USPTO may cancel a registration if the evidence of record shows that the registered mark was not in use in commerce on or in connection with some or all of the goods and/or services as of the filing date of the application or amendment to allege use, or before the deadline for filing a statement of use, as applicable. 15 U.S.C. §1066b; 37 C.F.R. §2.91(a)(2).
A petition requesting institution of an expungement proceeding may be filed in connection with a mark registered under Trademark Act Section 1, 44, or 66(a), 15 U.S.C. §§1051, 1126, 1141f. 37 C.F.R. §2.91(a)(1). However, a petition requesting institution of a reexamination proceeding may be filed only in connection with a mark registered under §1 of the Trademark Act.
These proceedings may be requested and instituted, within specific time periods, based on a third-party petition, or on the Director’s own initiative, if a prima facie case of nonuse of a registered mark is established. See TMEP §1716.01 regarding the timing for requesting and instituting expungement or reexamination proceedings and §1716.03(a) regarding establishing a prima facie case of nonuse.
If the USPTO institutes an expungement or reexamination proceeding, whether based on a petition or on the Director’s own initiative, the registrant will have the opportunity to present evidence of use rebutting the prima facie case or voluntarily delete the relevant goods and/or services from the registration. See TMEP §§1716.04(b)-(d) regarding registrant’s response options. If the registrant does not delete the relevant goods and/or services and cannot rebut the prima facie case of nonuse, or otherwise fails to respond to an Office action issued as part of the proceeding, the proceeding will ultimately terminate with a determination of nonuse. See TMEP §1716.04(e) regarding termination of proceedings. After termination, the registration will be cancelled in whole or in part, as appropriate, when (1) the deadline for filing an appeal lapses without an appeal being filed, or (2) a determination subject to an appeal is not overturned on review and the appeal process has ended.
A petitioner may request an ex parte expungement proceeding in connection with a registration at any time between 3 and 10 years after the date of registration. 15 U.S.C. §1066a(i); 37 C.F.R. §2.91(b)(1). In addition, until December 27, 2023, a petitioner may request an expungement proceeding for a registration that is at least 3 years old, regardless of the 10-year limit. Id.
A petitioner may request a reexamination proceeding in connection with a mark registered under §1 of the Trademark Act during the first five years following the date of registration. 15 U.S.C. §1066b(i); 37 C.F.R. §2.91(b)(2).
The Director may institute an ex parte expungement or reexamination proceeding on the Director’s own initiative within these same time periods, if otherwise appropriate. See 15 U.S.C. §§1066a(i) -1066b(i); 37 C.F.R. §2.92(b).
Any person may file a petition requesting institution of an expungement or reexamination proceeding. 37 C.F.R. §2.91(a). Only one registration may be specified per petition, and a petitioner who wishes to request both expungement and reexamination proceedings for the same registration must file separate petitions for each type of proceeding. See 37 C.F.R. §§2.91(a), (c)(2).
Reexamination and expungement petitions are intended to allow third parties to bring nonuse of registered marks to the attention of the USPTO. Therefore, a registrant whose mark was not used in commerce, or is no longer used in commerce, should not file a petition against its own registration, but instead should voluntarily surrender the registration for cancellation in its entirety or amend the registration to delete the relevant goods and/or services, as appropriate. See TMEP §1608 regarding surrendering a registration for cancellation and §1609.03 regarding deletion of goods and/or services in a registration. There is a $0 fee for voluntary deletions of goods and/or services from a registration prior to submission of a post-registration maintenance document. See 37 C.F.R. §2.6(a)(11)(iii). There is no fee for voluntarily surrendering a registration for cancellation. TMEP §1608.
A petition for expungement must allege that the 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." 37 C.F.R. §2.91(a)(1).
A petition for reexamination must allege that the trademark "was not in use in commerce on or in connection with some or all of the goods and/or services recited in the registration on or before the relevant date," which, for any particular goods and/or services, is determined as follows:
. . .
Under 37 C.F.R. §2.91(c), only a complete petition for expungement or reexamination will be considered.
A complete petition must be made in writing, filed through the trademark electronic filing system and include:
Once complete, the petitioner may not amend the petition. Id.
If a petition fails to include all of the elements required by 37 C.F.R. §2.91(c), the USPTO will issue a letter giving the petitioner 30 days to perfect the petition by complying with the outstanding requirements, if otherwise appropriate. The 30-day letter will not include a determination regarding whether the petition establishes a prima facie case, and the petitioner may not include additional evidence in its response. The petitioner may only provide evidence specifically requested in the 30-day letter. If the petitioner includes any other additional evidence in its response, the evidence will not be considered.
If petitioner does not comply with the outstanding requirements within the time allowed or does not timely respond to the 30-day letter, the petition will not be considered on the merits and the relevant proceeding will not be instituted. The determination of whether or not to institute an expungement or reexamination proceeding is final and non-reviewable. 15 U.S.C. §§1066a(c)(3), 1066b(d)(3); 37 C.F.R. §2.92(c)(1).
Under 37 C.F.R. §2.91(d), a petitioner must demonstrate that a bona fide attempt has been made to determine if the relevant registered mark was never used in commerce (for expungement petitions) or was not in use in commerce as of the relevant date (for reexamination petitions) on or in connection with the goods and/or services identified in the petition by conducting a reasonable investigation. The petition must include a verified statement that specifies the elements of this reasonable investigation for each source of information relied upon. 37 C.F.R. §2.91(c)(8). In particular, the statement must describe the sources searched, how and when the searches were conducted, and what information and evidence, if any, the searches produced. Id.
A reasonable investigation is an appropriately comprehensive search that is calculated to return information about the underlying inquiry from reasonably accessible sources where evidence concerning use of the mark during the relevant time period on or in connection with the relevant goods and/or services would normally be found. 37 C.F.R. §2.91(d)(1). Thus, what constitutes a reasonable investigation is a case-by-case determination and may vary depending on the circumstances. However, any investigation should focus on the mark in the registration and its use in the relevant marketplace on the identified goods and/or services, keeping in mind their scope and applicable trade channels.
The petition should establish that the petitioner’s investigation included a search covering the relevant channels of trade and advertising for the identified goods and/or services but did not reveal any relevant use of the mark consistent with the definition of "use in commerce" set forth in Section 45 of the Trademark Act, 15 U.S.C. §1127, and in relevant case law. See TMEP §§901-901.03 regarding use in commerce.
The sources of information and evidence provided in the petition should include reasonably accessible sources that can be publicly disclosed, because petitions requesting institution of expungement and reexamination proceedings will be entered in the registration record and be publicly viewable through the USPTO’s Trademark Status & Document Retrieval (TSDR) database. The number and nature of the sources a petitioner must check in order for its investigation to be considered reasonable, and the corresponding evidence that would support a prima facie case, will vary depending on the goods and/or services involved, their normal trade channels, and whether the petition is for expungement or reexamination.
For purposes of expungement and reexamination proceedings, nonuse is necessarily determined in reference to a time period that includes past activities, not just current activities. Accordingly, a petitioner’s investigation normally would include research into past usage of the mark for the goods and/or services at issue in the petition and thus may include a search for archival evidence, including cached web pages from sources such as Wayback Machine®.
A single search using an internet search engine likely would not be considered a reasonable investigation. See H.R. Rep. No. 116-645, at 15 (2020). However, a reasonable investigation does not require a showing that all of the potentially available sources of evidence were searched. Generally, an investigation that produces reliable and credible evidence of nonuse during the relevant time period may be considered sufficient.
Appropriate sources of evidence and information for a reasonable investigation may include, but are not limited to:
Evidence supporting a prima facie case of nonuse may be in the form of verified statements, screenshots from web pages, and excerpts from press releases, news articles, journals, magazines, or other publications, among other types of evidence. See 37 C.F.R. §2.91(c)(9). Examples of documentary evidence to support negative search results include screenshots or website printouts capturing the null result.
Any evidence consisting of screenshots from web pages must include the URL and access or print date. 37 C.F.R. §2.91(c)(9)(iii). Any evidence consisting of excerpts from press releases, news articles, journals, magazines, or other publications must identify the publication name and the date of publication. 37 C.F.R. §2.91(c)(9)(iv).
Petitioner may also include evidence suggesting that the verification accompanying a relevant allegation of use was improperly signed. 37 C.F.R. §2.91(c)(9)(v).
When a petition requesting institution of expungement or reexamination proceedings is filed, the petition will be uploaded into the registration record and be publicly viewable through TSDR. The USPTO will send a courtesy email notice of the petition to the registrant and/or the registrant’s attorney, as appropriate, if an email address is of record. The registrant may not respond to this courtesy notice, and no response from the registrant will be accepted except in response to an Office action issued after institution of a proceeding under 37 C.F.R. §2.92.
For purposes of correspondence related to these proceedings, the "registrant" is the owner/holder currently listed in USPTO records. If there has been a change of ownership, it is the registrant’s or the new owner’s responsibility to provide such information to the USPTO. See TMEP §502.01. Therefore, it is in the best interests of both the prior and new owners to provide evidence of changes of title, either by recordation of an assignment or otherwise, in a timely manner.
The Director shall, for each good or service identified under subsection (b)(2), determine whether the petition sets forth a prima facie case of the mark having never been used in commerce on or in connection with each such good or service, institute an ex parte expungement proceeding for each good or service for which the Director determines that a prima facie case has been set forth, and provide a notice to the registrant and petitioner of the determination of whether or not the proceeding was instituted. Such notice shall include a copy of the petition and any supporting documents and evidence that were included with the petition.
The Director shall, for each good or service identified under subsection (c)(2), determine whether the petition sets forth a prima facie case of the mark having not been in use in commerce on or in connection with each such good or service, institute an ex parte reexamination proceeding for each good or service for which the Director determines that the prima facie case has been set forth, and provide a notice to the registrant and petitioner of the determination of whether or not the proceeding was instituted. Such notice shall include a copy of the petition and any supporting documents and evidence that were included with the petition.
Notwithstanding section 7(b) of the Act, the Director may institute a proceeding for expungement or reexamination of a registration of a mark, either upon petition or upon the Director's initiative, upon determining that information and evidence supports a prima facie case of nonuse of the mark for some or all of the goods or services identified in the registration. The electronic record of the registration for which a proceeding has been instituted forms part of the record of the proceeding without any action by the Office, a petitioner, or a registrant.
. . .
The USPTO will only institute an expungement or reexamination proceeding, based either on a petition or on the Director’s own initiative, in connection with the goods and/or services for which a prima facie case of nonuse for the relevant time frame has been established. See 15 U.S.C. §§1066a(c)(1), 1066b(d)(1); 37 C.F.R. §2.92. See TMEP §1716.03(a) regarding establishing a prima facie case of nonuse.
If the USPTO determines that a petition does not establish a prima facie case of nonuse as to any or all of the goods and/or services identified in the petition, the relevant proceeding will not be instituted as to those particular goods and/or services. See 37 C.F.R. §2.92(c)(2). Notice of this determination will be provided to the registrant and petitioner and will include information to access the petition and supporting documents and evidence. See 15 U.S.C. §§1066a(c)(1), 1066b(d)(1); 37 C.F.R. §2.92(f). The petition will remain in the record of the registration.
Any determination whether or not to institute an expungement or reexamination proceeding, based either on a petition or on the Director’s own initiative, is final and non-reviewable. See 15 U.S.C. §§1066a(c)(3), 1066b(d)(3); 37 C.F.R. §2.92(c)(1).
With respect to these proceedings, a prima facie case requires only that a reasonable predicate concerning such nonuse be established. See H.R. Rep. No. 116-645, at 8 (citing In re Pacer Tech., 338 F.3d 1348, 1351 (Fed. Cir. 2003) and In re Loew’s Theatres, Inc., 769 F.2d 764, 768 (Fed. Cir. 1985)). Thus, a prima facie case includes sufficient notice of the claimed nonuse to allow the registrant to respond to and potentially rebut the claim with competent evidence, which the USPTO must then consider before making a determination as to whether the registration should be cancelled in whole or in part, as appropriate.
For expungement and reexamination proceedings based on a petition under 37 C.F.R. §2.91, the determination of whether a prima facie case has been made is based on the evidence and information that is collected as a result of the petitioner’s reasonable investigation and set forth in the petition, along with the USPTO’s electronic record of the involved registration. See TMEP §1716.02(c)(ii) regarding evidence of nonuse.
For Director-initiated expungement and reexamination proceedings, the information and evidence available to the USPTO must establish a prima facie case of nonuse. See 37 C.F.R. §2.92(b). For these Director-initiated proceedings, the evidence and information that may be relied upon to establish a prima facie case may be from essentially the same sources as those in a petition-initiated proceeding.
If a petition-based proceeding is instituted, the petitioner will not have any further involvement. In a Director-initiated proceeding, there is no petitioner, and thus all relevant notices will be provided only to the registrant and the registrant’s attorney, if any. See TMEP §1716.04(a) regarding providing notice of institution of a proceeding. In both types of proceedings, documents associated with the proceeding will be uploaded into the registration record and will be publicly viewable through TSDR. This includes any prima facie evidence that the USPTO relied upon to institute a Director-initiated proceeding.
To ensure consistency and promote efficiency, the Director may consolidate proceedings involving the same registration, including a Director-initiated proceeding with a petition-initiated proceeding. See 37 C.F.R. §2.92(e)(1). Consolidated proceedings are related parallel proceedings that may include both expungement and reexamination grounds. Id.
If two or more petitions under 37 C.F.R. §2.91 directed to the same registration have been submitted and no ex parte expungement or reexamination proceeding has been instituted as to either, or the Director wishes to institute an ex parte expungement or reexamination proceeding on the Director’s own initiative under 37 C.F.R. §2.92(b) concerning a registration for which one or more petitions under 37 C.F.R. §2.91 was submitted, the Director may elect to institute a single proceeding. 37 C.F.R. §2.92(e)(2). For example, if two or more petitions directed to the same registration identify goods and/or services in different classes, but each petitioner provides the required evidence and complies with the requirements of 37 C.F.R. §2.91, the Director may institute a single proceeding for the convenience of both the USPTO and the registrant. Similarly, if two or more petitions directed to the same registration identify various goods and/or services with some overlap, the Director may institute a single proceeding that covers all of the goods and/or services for which a prima facie case concerning nonuse is established.
When a determination regarding institution of an expungement or reexamination proceeding has been made, the USPTO will provide notice of the determination, in accordance with the correspondence rules in 37 C.F.R. §2.18. 37 C.F.R. §2.92(f)(2). See TMEP §1716.02(d) regarding the identity of the registrant for purposes of correspondence related to these proceedings. If the proceeding is petition-based, the petitioner will also be notified of the determination whether or not to institute the proceeding. 15 U.S.C. §§1066a(c)(1), 1066b(d)(1); 37 C.F.R. §2.92(f)(2).
If a proceeding is instituted, the notice of institution will include an Office action requiring the registrant to provide evidence of use. See 15 U.S.C. §§1066a(e), 1066b(f); 37 C.F.R. §§2.92(f)(2), 2.93(a). Office actions in these proceedings are substantively limited in scope to the question of use in commerce, but the registrant remains subject to the requirements of 37 C.F.R. §2.11 (requirement for representation), 37 C.F.R. §2.23 (requirement to correspond electronically), and 37 C.F.R. §2.189 (requirement to provide a domicile address). Thus, the registrant may be required to furnish domicile information as necessary to determine if the registrant must be represented by a U.S.-licensed attorney. In addition, registrants will be required to provide a valid email address for correspondence, if one is not already in the record, and to update the email address as necessary to facilitate communication with the USPTO.
See TMEP §301.01 regarding the mandatory electronic filing of trademark documents, §§601-601.01(c) regarding determining an owner’s domicile, and §1612 regarding the requirement for the correspondence email and domicile address of registrant.
The registrant must respond to the initial Office action via the trademark electronic filing system within three months of the issue date, but, within that time period, may request a one-month extension of time to respond, which requires the payment of the fee set forth in 37 C.F.R. §2.6(a)(27). 37 C.F.R. §2.93(b)(1).
The response must contain documentary evidence of use supported by information, exhibits, affidavits, or declarations as may be reasonably necessary to rebut the prima facie case of nonuse by establishing that the required use in commerce has been made on or in connection with the goods and/or services at issue and be properly signed. See 37 C.F.R. §§2.92(f)(2), 2.93(a), (b)(3). See TMEP §611.03(b) regarding signature of responses to Office actions and §1716.04(d) regarding submitting a response that deletes some or all of the goods and/or services at issue in the proceeding or surrenders the entire registration for cancellation.
When a timely response by the registrant is a bona fide attempt to advance the proceeding and is a substantially complete response to the Office action, but consideration of some matter or compliance with a requirement has been omitted, the registrant may be granted 30 days, or to the end of the time period for response set forth in the Office action to which the substantially complete response was submitted, whichever is longer, to resolve the issue. See 37 C.F.R. §2.93(b)(2). Granting the registrant additional time in such circumstances does not extend the time for filing an appeal to the Trademark Trial and Appeal Board (TTAB) or a petition to the Director.
If the registrant timely responds to the initial Office action in the expungement or reexamination proceeding, the USPTO will review the response to determine if use of the mark in commerce at the relevant time has been established for each of the goods and/or services at issue. If the USPTO finds, during the course of the proceeding, that the registrant has: (1) demonstrated relevant use of the mark in commerce sufficient to rebut the prima facie case, (2) demonstrated excusable nonuse in appropriate expungement cases, or (3) deleted goods and/or services, such that no goods and/or services remain at issue, the proceeding will be terminated, and the USPTO will issue a notice of termination under 37 C.F.R. §2.94. See TMEP §1716.04(e) regarding termination of expungement and reexamination proceedings.
If the registrant fails to timely respond to the initial Office action or timely submit a request for extension, the proceeding will terminate and the registration will be cancelled, in whole or in part, as appropriate. See TMEP §1716.04(f) regarding requesting reinstatement after cancellation for failure to respond to an Office action.
To ensure that registrants are aware of any correspondence or activity associated with any ex parte cancellation proceedings concerning their registered marks, registrants must monitor the status of their registrations in the USPTO’s electronic systems at least every three months after notice of the institution of an expungement or reexamination proceeding until the registrant receives a notice of termination under 37 C.F.R. §2.94. See 37 C.F.R. §2.23(d)(3). See TMEP §1705.05 regarding the duty to exercise due diligence in monitoring the status of pending trademark matters.
Documentary evidence of use provided by the registrant need not be the same as that required under the USPTO’s rules of practice for specimens of use under §1(a), but must be consistent with the definition of "use in commerce" in Section 45 of the Trademark Act, 15 U.S.C. §1127, and in relevant case law. 15 U.S.C. §§1066a(e), 1066b(f); 37 C.F.R. §2.93(b)(7); See TMEP §§901-901.03 regarding use in commerce.
Evidence must be accompanied by a verified statement. Any evidence of use must be accompanied by a verified statement signed by someone with firsthand knowledge of the facts to be proved, setting forth in numbered paragraphs factual information about the use of the mark in commerce, including a description of the supporting evidence and how the evidence demonstrates use of the mark in commerce as of any relevant date for the goods and/or services at issue. 37 C.F.R. §2.93(b)(7). Evidence must be labeled, and an itemized index of the evidence must be provided such that the particular goods and/or services supported by each item submitted as evidence of use are clear. Id.
Types of evidence. Although testimonial evidence may be submitted, it should be supported by corroborating documentary evidence. In most cases, the documentary evidence of use will include specimens of use, but there may be situations where, for example, specimens for particular goods and/or services are no longer available, even if they may have been available at the time the registrant filed an allegation of use. In these cases, the registrant may provide additional evidence and explanations, supported by declaration, to demonstrate how the mark was used in commerce at the relevant time. Generally, because the registration file has already been considered in instituting the proceeding based on a prima facie case of nonuse, merely resubmitting the same specimen of use previously submitted in support of registration or maintenance thereof, or a verified statement alone, without additional supporting evidence, will likely be insufficient to rebut a prima facie case of nonuse.
Evidence must demonstrate use during the relevant time period. For reexamination proceedings, the registrant’s evidence of use must demonstrate use of the registered mark in commerce on or in connection with the goods and/or services at issue on or before the relevant date established under 37 C.F.R. §2.91(a)(2). See 37 C.F.R. §2.93(b)(6)(i). Specifically, if registration of the mark was based on an application with an initial filing basis under §1(a) for the goods and/or services listed in the petition or subject to a Director-initiated proceeding, and not amended at any point to be filed pursuant to §1(b), the relevant date is the filing date of the application. 37 C.F.R. §2.91(a)(2)(i). Or, if registration of the mark was based on an application with an initial filing basis or amended basis of §1(b) for the goods and/or services listed in the petition or subject to a Director-initiated proceeding, the relevant date is the later of the filing date of an amendment to allege use identifying the goods and/or services listed in the petition, pursuant to §1(c), or the expiration of the deadline for filing a statement of use for the goods and/or services listed in the petition, pursuant to §1(d), including all approved extensions thereof. 37 C.F.R. §2.91(a)(2)(ii). The relevant dates set forth in 37 C.F.R. §2.91(a)(2)(i) -(ii) are considered for each good and/or service identified in a petition for reexamination. Under 37 C.F.R. §2.92(b), a Director-initiated proceeding may be instituted for the same reasons as those appropriate for a petition, and the relevant dates are therefore the same for a Director-initiated proceeding, even though there was no petition.
For expungement proceedings, the registrant’s evidence of use must show that the use occurred before the filing date of the petition to expunge under 37 C.F.R. §2.91(a), or before the date the proceeding was instituted by the Director under 37 C.F.R. §2.92(b), as appropriate. 37 C.F.R. §2.93(b)(5)(i).
Evidence must demonstrate use in connection with the identified goods and/or services in the registration. Evidence of use of the mark on or in connection with goods or services not at issue in the proceeding does not demonstrate relevant use of the mark in commerce. See In re Locus Link USA, No. 2022-100137E, 2024 TTAB LEXIS 225, at *14-15 (2024) (finding nonuse where the registrant’s evidence showed use of the mark in connection with components for evaporative coolers, but the identification as set forth in the registration covers evaporative coolers that are themselves component parts of air-cooling systems); Look Cycle Int’l v. Kunshan Qiyue Outdoor Sports Goods Co., Can. No. 92079409, 2024 TTAB LEXIS 289, at *28 (2024).
Specimens of use accepted during prosecution of the application. An examining attorney’s acceptance of specimens of use during the prosecution of an application that matures into a registration does not preclude an evaluation of whether such mark was in use in commerce in an expungement or reexamination proceeding, nor does it control the ultimate question of use. See In re Locus Link USA, No. 2022-100137E, 2024 TTAB LEXIS 225, at *17 (2024). The USPTO is not bound by prior decisions of an examining attorney in a subject application that matured into a registration. See id.
Bona fide use in the ordinary course of trade. Registrant’s use of the mark on the goods and/or services must be bona fide use in the ordinary course of trade and not merely to reserve a right in a mark. 15 U.S.C. §1127. See TMEP §901.02 regarding bona fide use in the ordinary course of trade. The examining attorney will consider whether the evidence of record shows bona fide use in the ordinary course of trade.
False evidence of use. Evidence of use that has been demonstrated to be false does not establish use in commerce. Look Cycle Int'l v. Kunshan Qiyue Outdoor Sports Goods Co., Can. No. 92079409, 2024 TTAB LEXIS 289, at *32-34 (2024). For example, when a petitioner or examiner provides evidence showing that an invoice submitted by the registrant includes a non-existent customer address and such evidence is unrebutted by the registrant, that invoice cannot be considered evidence of sales of the goods shown. See id.
Evidence of excusable nonuse for registrations with a sole registration basis under §44(e) or §66(a). A registrant in an expungement proceeding may respond by showing that any nonuse as to particular goods and/or services with a sole registration basis under §44(e) or §66(a) is due to special circumstances that excuse such nonuse, as set forth in 37 C.F.R. §2.161(a)(6)(ii). See 15 U.S.C. §1066a(f); 37 C.F.R. §2.93(b)(5)(ii). The registrant must provide verified statements and evidence to support the claim of excusable nonuse. 37 C.F.R. §2.93(b)(5)(ii).
Excusable nonuse may not be considered for any goods and/or services registered under §1 of the Trademark Act. See 37 C.F.R. §2.93(b)(5)(ii).
See TMEP §1604.11 for examples of special circumstances that may excuse nonuse.
A registrant may respond to an Office action in an expungement or reexamination proceeding by submitting a response that deletes some or all of the goods and/or services at issue in the proceeding or surrenders the entire registration for cancellation. See 37 C.F.R. §2.93(d). An acceptable deletion will be immediately effective, and the deleted goods and/or services may not be reinserted into the registration. 37 C.F.R. §2.93(d)(1). No other amendment to the identification of goods and/or services in a registration will be permitted as part of the proceeding. 37 C.F.R. §2.93(d). If goods and/or services that are subject to an expungement or reexamination proceeding are deleted after the filing, and before the acceptance, of an affidavit or declaration under §8 or §71, the deletion will be subject to the fee under 37 C.F.R. §2.161(c) or 37 C.F.R. §7.37(c). 37 C.F.R. §2.93(d)(1).
In addition, a registrant may submit a separate request to surrender the subject registration for cancellation under 37 C.F.R. §2.172 or a request to amend the registration under 37 C.F.R. §2.173. No amendment to the identification of goods or services will be permitted except to restrict the identification or to change it in ways that would not require republication of the mark. 37 C.F.R. §2.173(e); In re Locus Link USA, No. 2022-100137E, 2024 TTAB LEXIS 225, at *6 (2024). However, the mere filing of these requests will not constitute a sufficient response to an Office action requiring the registrant to provide evidence of use of the mark in the expungement or reexamination proceeding. The registrant must affirmatively notify the USPTO of the separate request in a timely response to the Office action. See 37 C.F.R. §2.93(d)(2).
Any deletion of goods and/or services at issue in a pending proceeding requested in a response, a surrender for cancellation under 37 C.F.R. §2.172, or an amendment of the registration under 37 C.F.R. §2.173, shall render the proceeding moot as to those goods and/or services, and the USPTO will not make any further determination regarding the registrant’s use of the mark in commerce as to those goods and/or services.
See TMEP §1604.09(b) regarding deletion of goods/services/classes from a registration after submission and prior to acceptance of a §8 affidavit or declaration, §1608 regarding surrendering a registration for cancellation, §1609.03 regarding deletion of goods and/or services in a registration where no fee is required, and §1613.09(b) regarding deletion of goods/services/classes from a registration after submission and prior to acceptance of a §71 affidavit or declaration.
If the registrant’s timely response to a nonfinal Office action in an expungement or reexamination proceeding fails to establish use of the mark in commerce at the relevant time (or to sufficiently establish excusable nonuse, if applicable) for all of the goods and/or services at issue, or otherwise fails to comply with all outstanding requirements, the USPTO will issue a final action. 37 C.F.R. §2.93(c)(1).
In an expungement proceeding, the final action will include the examiner’s decision that the registration should be cancelled for each good or service challenged in the petition and/or Director-initiated proceeding for which the mark was determined to have never been used in commerce or for which no excusable nonuse was established.
In a reexamination proceeding, the final action will include the examiner’s decision that the registration should be cancelled for each good and/or service challenged in the petition and/or Director-initiated proceeding for which it was determined the mark was not in use in commerce on or before the relevant date.
As appropriate, in either an expungement or reexamination proceeding, the final action will include the examiner’s decision that the registration should be cancelled for noncompliance with any requirement set forth in a previous Office action under 37 C.F.R. §§2.11, 2.23, or 2.189.
If a final action is issued, the registrant will have three months to file a request for reconsideration or an appeal to the TTAB, if appropriate. 37 C.F.R. §2.93(c)(1). This deadline may not be extended. See TBMP Chapter 1300 for further information about ex parte appeals from expungement and reexamination proceedings.
If the registrant fails to timely appeal or file a request for reconsideration that rebuts the prima facie case of nonuse and establishes use of the mark in commerce at the relevant time for all goods and/or services that remain at issue in a final action (or that deletes the remaining goods and/or services at issue), the USPTO will issue a notice of termination of the proceeding and then cancel the registration in whole or in part as appropriate. 37 C.F.R. §2.94. The notice will set forth the goods and/or services for which relevant use was, or was not, established, and any requirements with which the registrant failed to comply. See 37 C.F.R. §2.93(c)(3)(ii). The notice of termination is a statement intended to memorialize the ultimate outcome of the proceedings and is not itself reviewable on petition or appeal.
If the USPTO determines that the required use in commerce (or excusable nonuse, in appropriate cases) was not established, the notice of termination will indicate the goods and/or services for which the registration will be cancelled. See 37 C.F.R. §2.94. If the goods and/or services for which use (or excusable nonuse) was not demonstrated are the only goods and/or services in the registration, or there remain any additional outstanding requirements, the entire registration will be cancelled. However, if the determination of nonuse relates only to a portion of the goods and/or services in the registration, and there are no other outstanding requirements, the notice of termination will indicate that registration will be cancelled in part, as appropriate. A notice of termination will not issue until all outstanding issues are satisfactorily resolved (and thus no cancellation is necessary) or the time for appeal has expired or any appeal proceeding has terminated. Petitioners and other interested parties may monitor the progress of a proceeding by reviewing the status and associated documents through TSDR.
If a notice of termination issues in a proceeding where the USPTO determines that the registration should be cancelled for some or all of the goods and/or services, the USPTO will then cancel the registration, in whole or in part, as appropriate. See 15 U.S.C. §§1066a(g), 1066b(g); 37 C.F.R. §2.94.
Registrations cancelled in whole or in part will be published in the electronic Trademark Official Gazette. In addition, the USPTO will issue an updated registration certificate for any registration cancelled in part.
If a registration is cancelled, in whole or in part, because of a failure to respond to a nonfinal or final Office action in an expungement or reexamination proceeding, and that failure to respond is due to an extraordinary situation, the registrant may file a petition requesting reinstatement of the registration, in whole or in part, and resumption of the proceeding. See 37 C.F.R. §2.146(a)(5). The petition must be filed no later than two months after the date of actual knowledge of the cancellation of the registration, in whole or in part, and may not be filed later than six months after the date of cancellation in TSDR. 37 C.F.R. §2.146(d)(2)(iv). In addition, the petition must include a response to the Office action or an appeal to the TTAB (if the registrant failed to respond to a final action). 37 C.F.R. §2.146(c)(2).
Upon termination of an expungement proceeding in which it was established that the registered mark was used in commerce on or in connection with any of the goods and/or services at issue in the proceeding prior to the date a petition to expunge was filed under 37 C.F.R. §2.91 or the Director-initiated proceedings were instituted under 37 C.F.R. §2.92, no further ex parte expungement proceedings may be instituted as to those particular goods and/or services. 15 U.S.C. §1066a(j)(2); 37 C.F.R. §2.92(d)(1). However, subsequent reexamination proceedings for marks registered under Section 1 are not barred under these circumstances because reexamination proceedings involve a question of whether the mark was in use in commerce as of a particular relevant date, whereas earlier expungement proceedings would only have involved a determination of whether the mark was never used. Proof of use sufficient to rebut a prima facie case of nonuse in an expungement proceeding might not establish use in commerce as of a particular relevant date, as required in a reexamination proceeding.
Upon termination of a reexamination proceeding in which it was established that the registered mark was used in commerce on or in connection with any of the goods and/or services at issue, on or before the relevant date at issue in the proceedings, no further ex parte expungement or reexamination proceedings may be instituted as to those particular goods and/or services. See 15 U.S.C. §1066b(j)(2); 37 C.F.R. §2.92(d)(2).
Once an expungement proceeding has been instituted for a particular registration and is pending, no later expungement proceeding may be instituted for that registration with respect to the same goods and/or services at issue in the pending proceeding. 15 U.S.C. §1066a(j)(1); 37 C.F.R. §2.92(d)(3). In addition, while a reexamination proceeding is pending against a particular registration, no later expungement or reexamination proceeding may be instituted for that registration with respect to the same goods and/or services at issue in the pending proceeding. See 15 U.S.C. §1066b(j)(1); 37 C.F.R. §2.92(d)(4).
For the purposes of these rules, the wording "same goods and/or services" refers to identical goods and/or services that are the subject of the pending proceeding or the prior determination. Thus, for example, if a subsequent petition for reexamination identifies goods that are already the subject of a pending reexamination proceeding and goods that are not, only the latter goods could potentially be the subject of a new proceeding. The fact that there is some overlap between the goods and/or services in the pending proceeding and those identified in a petition would not preclude the goods and/or services that are not the same from being the subject of a new proceeding, if otherwise appropriate. This situation is addressed in 37 C.F.R. §2.92(c)(2), which permits the Director to institute a proceeding on petition for fewer than all of the goods and/or services identified in the petition.