Expungement and Reexamination Proceedings

Expungement and reexamination proceedings, created by the Trademark Modernization Act of 2021, provide streamlined mechanisms for challenging federal trademark registrations where the mark was never used or was not in use on the relevant date. These proceedings are administered by the USPTO's Trademark Office (not the TTAB) and are significantly faster and less expensive than traditional cancellation proceedings before the Trademark Trial and Appeal Board.

When to Use Expungement

An expungement proceeding is appropriate when you have evidence that a registered trademark has never been used in commerce on some or all of the goods or services listed in the registration. This commonly arises when a mark was registered through an intent-to-use application, the registrant filed a Statement of Use to satisfy the use requirement, but the mark was never actually used on certain goods or services listed in the registration. Expungement is available for registrations that are between 3 and 10 years old. For registrations less than 3 years old, reexamination is the appropriate proceeding.

When to Use Reexamination

A reexamination proceeding is appropriate when you have evidence that the registered mark was not in use in commerce on the relevant date. For use-based applications (Section 1(a)), the relevant date is the application filing date. For intent-to-use applications (Section 1(b)), the relevant date is the date the Statement of Use or Amendment to Allege Use was filed. Reexamination is available for registrations that are between 3 and 10 years old, with the additional requirement that the petition must be filed within 5 years of the registration date.

Filing Requirements

Both proceedings require a verified petition filed with the USPTO along with the prescribed fee ($600 per class). The petition must include a verified statement that the petitioner has a reasonable investigation and believes the mark was never used (expungement) or was not in use on the relevant date (reexamination) on the goods or services challenged. The petition must also include supporting evidence, which may include declarations about marketplace research, evidence from the registrant's website or marketing materials showing non-use, lack of any online presence for the goods or services, and any other evidence tending to show that the mark was not or has never been in use.

The Proceeding Process

After a petition is filed, the USPTO reviews it to determine whether a prima facie case has been established. If so, the proceeding is instituted, and the registrant is notified and given an opportunity to submit evidence of use. The registrant bears the burden of proving use — they must provide competent evidence that the mark was in use in commerce on or in connection with the challenged goods or services. If the registrant cannot establish use, the challenged goods or services are deleted from the registration. If all goods and services are deleted, the registration is cancelled entirely.

Strategic Uses

These proceedings can be strategically valuable in several scenarios. If your trademark application has been refused based on a prior registration, and you have reason to believe the cited mark is not actually in use, expungement or reexamination can remove the obstacle to your registration. If you are considering entering a market and a registered mark appears to block your entry, but the mark does not appear to be in actual use, these proceedings can clear the path. And as a defensive measure, monitoring for unused marks in your space and proactively clearing them helps maintain a cleaner competitive landscape.

Comparison with TTAB Cancellation

Traditional cancellation proceedings before the TTAB are more formal, more expensive, and typically take longer than expungement or reexamination. However, TTAB cancellation proceedings offer broader grounds for challenge — including likelihood of confusion, fraud, abandonment, functionality, and other grounds not available in expungement or reexamination. For challenges based solely on non-use, expungement and reexamination are generally the faster and more cost-effective option. For challenges based on other grounds, TTAB cancellation remains the appropriate procedure. In some cases, pursuing both tracks simultaneously may be strategically advantageous.