Expungement is a way to cancel Trademarks that don’t actually qualify for Trademark registration, but somehow were granted by the USPTO examination Attorneys. Expungement is an ex-parte proceeding which looks at whether the registration was ever actually in use. If a Trademark registration was issued and not actually used for the type of good and service claimed in the registration, expungement is granted. 

A third party may file for Trademark expungement of a registered Trademark between the 3rd and 10th years after registration. If a petition for Trademark expungement is filed against your Trademark, do not ignore it. Failure to respond to all allegations in the petition will result in some, or all of your registration’s cancellation.

Make sure your information with the USPTO is always up to date. This is how the USPTO will contact you if you need to respond to an expungement petition. The means of avoiding this situation used to be, albeit limited - straightforward and binary. Two ex parte proceedings existed to cancel unused registered Trademarks. Recently there was a procedure introduced called the New Ex Parte Expungement and Reexamination Proceeding put in place to provide a faster, more efficient, and less expensive alternative to a contested inter partes cancellation proceeding at the Trademark Trial and Appeal Board (TTAB). 

The USPTO also supplements existing administrative maintenance requirements for registrations. The owners of the registered Trademark must regularly prove that they’re using the Trademark in commerce with all of the goods or services listed in the registration. However, unless registrations are audited, they only have to provide one specimen of use in commerce for each class of goods or services, and they choose which specimen to provide. The new proceedings allow any party to challenge any good or service in a registration, if that party provides evidence establishing a prima facie case of nonuse. “Prima facie evidence means that proof of the first fact permits, but does not require, the fact finder, in the absence of competing evidence, to find that the second fact is true beyond a reasonable doubt.” Registration owners will have to prove that they were using the goods and services in commerce or before the particular date. 

Interested in Trademark expungement? Click HERE to learn how to expunge that pesky unused mark!