Businesses seeking to clear the path for their trademarks can challenge trademarks of others that are not genuinely in use. The U.S. Patent and Trademark Office (USPTO) expungement and reexamination proceedings provide businesses with tools to challenge such existing trademark registrations. The USPTO recently announced that it has successfully used such proceedings to clear more than 25,000 unused goods and services from the trademark register in 2024.

To maintain their registration, trademark owners are required to use their trademark in commerce for all the goods and services listed in the registration. However, when active trademark registrations include goods and services that no longer apply, they can block subsequent legitimate owners from registering the same or a similar mark.

Expungement and reexamination proceedings are two ways a party can challenge a registration due to nonuse in an attempt to cancel that registration. These proceedings are generally less expensive and more efficient than a formal cancellation proceeding before the Trademark Trial and Appeal Board (TTAB). If the request succeeds, the USPTO will delete those goods or services from the registration or cancel the registration altogether.

Expungement versus Reexamination

The type of proceeding depends on the particular facts. A party may institute an expungement proceeding if it can show that the owner never used the trademark in commerce with reference to some or all of the goods or services listed in the registration. Expungement is available for a registration based on use in commerce, a foreign registration, or the Madrid Protocol. Expungement must be requested between three and ten years after the trademark registration date.

On the other hand, a party may institute a reexamination proceeding if it can show that the owner did not use the trademark in commerce with reference to some or all of the goods or services listed in the registration on or before the relevant date required for showing proof of use. The “relevant date” is the date when the underlying application was initially filed based on use in commerce. When the underlying application was filed or amended to an intent-to-use basis, the “relevant date” is the date that an accepted amendment to allege use was filed or the end date of the statement-of-use period for an accepted statement of use. Reexamination must be requested within the first five years after registration.

How to Institute a Proceeding

To institute either an expungement or a reexamination proceeding, a party must submit the relevant form requesting that the USPTO institute a proceeding, including a verified statement, evidence supporting nonuse (such as past and current nonuse, fake or digitally altered specimens of use, or evidence of improper behavior that is relevant to nonuse), and a $400 fee per class of goods or services challenged. The trademark owner is notified and can submit a response. Aside from the original filing, no other documents are required. The USPTO will then consider all the evidence and make a determination. This process can take anywhere from four to twelve months.

For comparison purposes, the cost to institute a formal proceeding at the TTAB is $600 per class and can last up to three years. This does not include any legal fees incurred as a result of engaging in the adversarial proceeding, including motion filings and discovery.

Conclusion

In the past, if a registered mark were cited against an application based on a likelihood of confusion, the applicant could either respond with arguments as to why there was no likelihood of confusion or seek to cancel the registered mark. The expungement and reexamination proceedings give applicants another avenue for overcoming this type of refusal.