USPTO implements the Trademark Modernization Act

Any third party may file a petition with the USPTO to request institution of an expungement or reexamination proceeding. The petition is filed in the petitioner’s name. The petitioner may be an individual or a juristic entity. While you’re not required to identify the name of the real party in interest on whose behalf the petition is filed, the Director has authority to require that information in particular cases. For example, while an attorney can file the request in their name instead of their client’s name, the Director may require the attorney to provide the client’s identity. Foreign-domiciled petitioners are required to obtain U.S. counsel in order to file a petition.

Submit a Petition for Expungement or Reexamination form requesting that the USPTO Director institute a proceeding to cancel some or all of the goods or services identified in a trademark registration for which the trademark either has never been used in commerce for expungement or was not used in commerce before a particular relevant date for reexamination.

The request must include: 

• A verified statement that establishes a reasonable investigation was conducted regarding whether the trademark had been used in commerce with specified goods or services and includes a concise factual statement explaining the basis for the petition
• Evidence supporting a prima facie case of nonuse in commerce ("a reasonable predicate") and an index of the evidence (see example indexes)
• The $400 fee per class of goods or services

If the submission doesn’t satisfy all the requirements for a complete petition, we will issue a letter that gives the petitioner 30 days to complete the petition. Common reasons for a 30-day letter are that the required index of evidence was not included or that the verified statement of the petitioner’s reasonable investigation (i.e., testimonial evidence) refers to negative search results (i.e., documentary evidence) that were not included in the petition. Even if you didn’t find anything during your search, we still need to see that you completed a search and what results you found to confirm any statements you made about the search. We need to see what you searched, how you searched it, and screen shots of any negative search results. We will not accept new evidence submitted in response to a 30-day letter.

We’ll upload the petition containing the request and the evidence into the registration record viewable through the Trademark Status and Document Retrieval (TSDR) system. We will also send a courtesy email notice to the registrant or its attorney, if an email address is of record. Any expungement and reexamination petitions we receive are available to the public.

Once you file, you cannot withdraw a petition. If the Director determines that a prima facie case is established, the proceeding will continue forward between the USPTO and the registrant.

The USPTO Director will institute a proceeding if one of the following occurs:

• The petition to request institution of an expungement proceeding establishes a prima facie case that the trademark was never used in commerce for some or all of the specified goods or services.
• The petition to request institution of a reexamination proceeding establishes a prima facie case that the trademark was not in use in commerce as of the relevant date for some or all of the specified goods or services.

The USPTO Director will not institute a proceeding if the Director determines that a prima facie case has not been established.

In making the institution determination, the Director will consider both the petitioner’s evidence and the entire electronic record of the registration at issue.

If the petitioner's search was not sufficiently comprehensive, the Director will not institute proceedings. The Director cannot supplement a deficient petition with additional evidence. However, the Director may institute proceedings on its own initiative if there is evidence that establishes a prima facie case and if resources allow.

If the Director determines not to institute proceedings, the TMA petition examiner will indicate in a notice of non-institution that the evidence in the petition did not sufficiently establish a prima facie case. The examiner may also note any other deficiencies in the petition, but will not provide detailed explanations or descriptions of the insufficiency. This determination is final and non-reviewable.

Notice of the Director's determination whether or not to institute the proceeding, and if so, whether to do so for some or all of the challenged goods or services, will be sent to the petitioner and the registrant. At this point in the process, the petitioner's involvement ends.

Examiner issues notice and office action in the same communication. If a proceeding is instituted, a USPTO examiner will issue a notice informing the registrant or its attorney. The office action will require a response with evidence of use (and/or excusable nonuse in expungement proceedings involving registrations with underlying applications based solely on §44(e) or §66(a)) for the goods or services in question. The office action may address other issues besides use, such as the requirement for U.S. counsel, to correspond electronically, and/or to provide the registrant's domicile address.

The registrant has three months to respond. For a nonfinal action, the registrant has the option to request a one-month extension for a $125 fee. The registrant may respond by providing appropriate evidence and/or deleting from the registration some or all of the goods or services at issue. If the registrant timely responds, but the response is incomplete, the USPTO has the discretion to grant the registrant 30-days to complete the response. This doesn’t extend the time to file an appeal to the Trademark Trial and Appeal Board (TTAB) or a petition to the Director.

If the registrant does not respond by the due date, the proceeding will be terminated and the registration cancelled in whole or part, as appropriate. In rare circumstances, if the registration is cancelled because the registrant failed to respond to the office action due to an extraordinary situation, the registrant may file a petition requesting reinstatement of the registration and resumption of the proceeding. The petition must be filed within two months from the date of actual knowledge of the cancellation, and include the fee, an explanation of the extraordinary situation, and a response to the office action. In any event, the petition must be filed within six months of the date of cancellation.

We make a determination. If the registrant provides a timely response, the USPTO examiner will consider all the evidence and decide whether the registration should be cancelled as to some or all of the goods or services at issue. If we determine that:

• The registrant showed use in commerce of the trademark (or, for expungement proceedings, established excusable nonuse for registrations with underlying applications based solely on §44(e) or §66(a)), for all of the goods or services at issue, we will issue a notice of termination of the proceeding. The registrations will not be cancelled.
• The registrant deleted all of the goods or services at issue or surrendered the entire registration, we will issue a notice of termination. The registration will be cancelled as to the deleted goods or services.
• The registrant did not show use in commerce of the trademark (or, for expungement proceedings, did not establish excusable nonuse for registrations with underlying applications based solely on §44(e) or §66(a)), for some or all of the goods or services at issue, or otherwise fails to comply with all outstanding requirements, we will issue a final action addressing the registrant’s evidence or arguments and setting forth the decision that the registrations should be cancelled as to those goods or services. If the registrant did not comply with a requirement for representation, to correspond electronically, and/or to supply the registrant’s domicile address, the final action will include the examiner’s decision that all of the goods or services at issue in the proceeding should be cancelled.
  
  Appeal or request reconsideration of decision. The registrant will have three months to request reconsideration of this decision or to appeal it to the TTAB. If the registrant doesn’t file a request or appeal, we will issue a notice of termination of the proceeding that specifies the final determination regarding the goods or services at issue, and the registrations will be cancelled in whole or in part. Filing a request for reconsideration does not extend the time for appeal.

The USPTO Director may institute these new proceedings, even without a petition requesting institution, if the Director discovers information that supports a prima facie case ("a reasonable predicate") that the trademark has:

• Never been used in commerce with certain goods or services
• Not been used in commerce as of the particular relevant date with certain goods or services covered by the registration

Any Director-initiated expungement and reexamination proceedings are viewable by the public in the Trademark Decisions and Proceedings search tool.

The TMA rule currently provides no limit on the number of petitions that can be filed by the same petitioner or against the same registration for the following reasons.

If we discover someone has filed petitions that appear to abuse the process or otherwise harass the registrant, we may limit the petitioner’s ability to file further petitions or initiate additional proceedings.

If evidence in the filings appears to be improper in some way, that evidence will be given little or no weight in the determination of whether to institute TMA proceedings.

Estoppel provisions

The TMA rule’s estoppel provisions prevent institution of any future proceedings before the Director against the goods and services in a registration that have been the subject of a previous proceeding and where acceptable proof of use was provided. The estoppel provisions do not prevent an unsuccessful TMA petitioner from filing at the TTAB a petition to cancel the same registration for expungement, nonuse, abandonment, or fraud. TMA proceedings before the Director do not have claim preclusive effects in federal court for nonuse, abandonment, or fraud.

Suspension provisions

TTAB or court proceedings may be suspended for TMA proceedings, and vice versa. However, if you have initiated a TTAB or court proceeding and a TMA proceeding involving the same registration(s), where cancellation of the challenged registration(s) may be outcome determinative in all proceedings, suspension should generally be requested for the TTAB or court proceeding because the TMA proceeding will be concluded much faster.

Also, USPTO trademark examination may be suspended pending the outcome of a TMA proceeding. For example, a trademark applicant filed a TMA petition to terminate a registration that is preventing the applicant’s trademark from registering, due to likelihood of confusion. Then, the applicant also requests that examination of their application is suspended until a decision is made regarding the TMA petition.

Petitioners may wish to rely on different types and sources of evidence such as past and current nonuse, fake or digitally altered specimens of use, and evidence of improper behavior that is relevant to nonuse. Examiners are permitted to make reasonable inferences from the evidence.

Evidence of past and current nonuse

Evidence of past nonuse includes:

• Wayback Machine® (Archive.org)
•  Relevant date searches (for reexamination proceedings)
• Lack of U.S. presence of the owner
• Lack of importation information
• Invalidation of country of origin registration for nonuse
• Statements that indicate sales are limited to places outside of the U.S.

Evidence of current nonuse includes:

• Evidence of nonuse over different periods of time
• Evidence of nonuse on multiple big sales platforms
• Evidence of nonuse in more specialized stores when appropriate for the goods or when goods would not be sold on large platforms
• Industry-specific evidence from regulatory agencies where relevant to show nonuse
• Evidence from public filings such that contain statements from registrant that support inference of nonuse
• Evidence of search results from reverse image searching for design marks

Merely submitting evidence of current nonuse, that is nonuse at the time you file a petition, will not be sufficient to establish a prima facie case of nonuse.

Digitally altered specimens

If you have evidence that shows that a previously submitted specimen is fake or digitally altered, you can submit that as evidence that the trademark was not in use in commerce as of the relevant date. This may include reverse image search results showing possible sources of images used to create the fake specimen. You can also submit that evidence, along with evidence that a suitable investigation was conducted, to support a claim of expungement for a trademark that was never used with the goods or services for which the specimen was originally submitted.

In many cases, evidence that a specimen is fake or digitally altered will be evidence of nonuse only for the type of goods or services encompassed by the specimen. You may need other types of documentary evidence of nonuse to challenge other goods or services in the same class during a reexamination or expungement proceeding.

You may be able to establish a reasonable predicate for nonuse for other goods or services in the same class if, in addition to the digitally altered specimen, you provide evidence of past and current nonuse (see above for more information about evidence of nonuse).

Improper behavior relevant to nonuse

Evidence of fraud or improper behavior relevant to nonuse may include:

• Online display/website lacks characteristics necessary for an e-commerce website, such as an inability to actually purchase the goods
• Website uses identical language as that on multiple third-party websites
• Website features recognizable third-party goods with a superimposed trademark that appears to be mocked up for presentation online 
• Website features a wide range of unrelated goods/services that don’t clearly demonstrate use in commerce
• Evidence that the U.S. trademark registration is for sale on foreign websites

Follow these best practices for preparing a petition for reexamination or expungement.

Document your search and other evidence

An investigation is part of a complete petition, but it doesn’t replace the need for documentary evidence of nonuse. You must provide evidence of your investigation and its results. For example, it’s not enough to say that you “didn’t find any hits” during your reasonable investigation. You should provide documentation or screenshots that a trademark didn’t show up in the searches you conducted. For example:

• If you searched Walmart, Target, or Amazon websites for use of a particular trademark and zero search results were returned, provide a screenshot of the webpage showing negative search results.   
• Use screenshots from Archive.org (Wayback Machine) to show no past use. Wayback Machine evidence does not have to be certified but does need to include the date range searched and the date the Wayback Machine was accessed.

You should also:

• Include the search strategy you used for your search. This helps us determine if your search was sufficient to satisfy the reasonable investigation standard.
• Include multiple sources to show nonuse, not just one large online retailer. Look for multiple e-commerce websites and specialty retailers.
• Search for industry-specific evidence that would support nonuse, including evidence from regulatory bodies/agencies with which regulated businesses would register or file documents.
• For design-only registrations, conduct reverse image searches.

Submit effective, relevant evidence

Your index of evidence should identify the goods or services for which each piece of evidence applies. You should provide only the relevant pages. Do not submit “data dumps.”

In general, avoid providing any evidence in the record that doesn’t directly address or support your allegation of nonuse.

Other trademark registration records as evidence

If you’re using the record of any other trademark registration or application as evidence in your petition, you must provide the specific, relevant documents within those registrations or applications that support your nonuse allegation. Do not simply submit a text entry from the Trademark Document Retrieval system (TSDR). For example, if a maintenance document filed in another registration owned by the same registrant shows nonuse or deletion of the goods or services in question for the same or very similar trademark, provide copies/image files of the actual document rather than the TSDR printout showing just the prosecution history.

Section 44 or 66 registrations

U.S. law requires that a registration based on a foreign registration or under the Madrid Protocol must be in use in commerce three years after registration. If your mark is not in use, a third party may petition to request institution of expungement proceedings before the Director or may petition to cancel your registration for expungement or abandonment before the TTAB.

However, if the application underlying your trademark registration was based on a foreign registration or the Madrid Protocol (Section 44 or Section 66), you can offer evidence of excusable nonuse in a response to an office action for expungement. A claim of excusable nonuse requires evidence that the nonuse is due to special circumstances outside of your control and is not due to an intention to abandon the trademark.

Use-in-commerce registrations

If the application underlying your trademark registration was use-based (Section 1(a)), you cannot claim excusable nonuse in your response to an office action for either expungement or reexamination.

The statute does not provide for this for TMA proceedings, only for registration maintenance filings.

A statutory condition for registering a trademark based on use in commerce was that the trademark was in use in commerce. If you weren’t using the trademark in commerce when it registered, you cannot go back and claim that the nonuse during the prosecution of the application was excusable.

Additional tips

Assignment and reexamination proceedings. If you are an assignee (current registration owner) and the petition requesting institution of reexamination proceedings is filed against your registration, you are responsible for establishing use as of the relevant date by the assignor (previous registration owner).

Deletion of goods or services. If you decide to delete the challenged goods or services in response to an institution but your Section 8 or Section 71 filing is currently being examined, you must pay the $250-per-class deletion fee.

Keep correspondence address updated. Anyone with a trademark registration should maintain a valid correspondence address in the registration record because the USPTO sends notifications of expungement and reexamination petitions to that address. The address can include the email address of an attorney whose recognition by the USPTO technically ended, but whose representation agreement with the client may continue.

If an attorney does not want to receive correspondence about a registration, file a Change Address or Representation (CAR) form to update the correspondence address information in TSDR.

• The same registration can be the subject of a TMA petition as well as a TTAB petition to cancel for expungement, nonuse, or abandonment.
• A TTAB petition costs $600 per class. A TMA petition costs $400 per class.
• A TMA petition is limited solely to evidence relevant to nonuse.
• A successful expungement or reexamination proceeding results in cancellation of some or all of the goods and services at issue. TSDR will show what goods and services were cancelled. If all the goods or services were cancelled, TSDR will show that the entire registration was cancelled.
• The result of a TMA proceeding and a TTAB proceeding for nonuse is the same: cancellation of the goods and services for which nonuse is demonstrated.
• A TMA proceeding will result in cancellation of only those goods or services where:
  • A prima facie case of nonuse was established, and
  • The registrant did not provide proof of use for the challenged goods or services. A TMA examiner will not order cancellation of the entire registration or the entire class if less that the entire class is subject to the proceeding.