On February 4, 2022, the United States Patent and Trademark Office released a new public page showing new ex parte expungement or reexamination petitions for failure to use the challenged mark in commerce. Since its implementation on December 21, 2021, there have been 20 petitions for expungement and 10 petitions for reexamination filed on non-used registrations. An example of one petition links to the corresponding registration page in the Trademark Status and Document Retrieval (TSDR) database as shown below:
Once a petition has been processed by the USPTO, it will show up under the Proceedings tab in TSDR:
The Trademark Modernization Act created two new procedures for challenging registered marks that were not being used in commerce: ex parte expungement petition and ex parte reexamination petition. Ex parte expungement allows third parties to challenge a registered mark if the registrant has never used the mark in commerce. An expungement proceeding must be filed between three and ten years after the challenged mark’s registration date, although the ten year requirement is waived until December 27, 2023. Ex parte reexamination allows third parties to challenge a registered mark if the registrant had not used the mark in commerce either before the filing date of a use-based application, or the date the allegation of use/statement of use was filed in an intent-to-use application. A reexamination proceeding must be filed within five years after the challenged mark’s registration date. For either type of proceeding, if upon review, the USPTO may cancel the mark’s registration.
The examination guidelines for the expungement and reexamination actions were released on December 18, 2021.
If there are any questions on these two new trademark ex parte proceedings, please contact Yonaxis IP.