Trademark Expungement or Reexamination: Which Should You File?

A registration that blocks your application is only as strong as the use behind it. If the registrant never sold the listed goods in the United States, a trademark expungement petition can strip those goods from the registration without a single deposition. If the goods were sold, but not on the date the registrant swore they were, reexamination does the same job. Both are ex parte proceedings created by the Trademark Modernization Act of 2020, and both are the first tools the trademark enforcement and expungement team at Capitol Law Partners considers when a cited registration looks hollow.

The difference between the two comes down to one question: was the mark ever used for those goods, or was it merely not in use on the relevant date? That answer, plus the age of the registration, tells you which petition to file.

Why the Trademark Modernization Act created these petitions

For years the register filled with registrations that claimed goods nobody sold. Many came from foreign applicants who registered in the United States without proving use, and some use-based filings relied on doctored specimens. Clearing them required a full cancellation before the Trademark Trial and Appeal Board, with discovery, testimony and briefing. Applicants often gave up and picked another name.

Expungement and reexamination changed that. A petitioner submits evidence of nonuse, the USPTO Director decides whether to institute, and from that point the matter is between the USPTO and the registrant. The petitioner pays a fee per class and then steps aside.

Trademark expungement: the mark was never used

Expungement applies when the mark was never used in commerce for some or all of the listed goods or services. It can be requested between the third and tenth anniversaries of the registration date. The typical target is a registration obtained under Section 44(e) on the basis of a foreign registration, or under Section 66(a) through the Madrid Protocol, because those owners were not required to show U.S. use before registering. A use-based registration can be expunged too if the claimed use never happened.

“Never” is the operative word. If the registrant sold the goods once, even briefly, expungement fails for those goods and your remedy shifts to a cancellation for abandonment, which we cover in our post on trademark cancellation grounds.

Reexamination: the mark was not in use on the relevant date

Reexamination applies only to registrations issued on a use basis under Section 1. The question is whether the mark was in use in commerce for the listed goods as of the relevant date. For an application filed on a use basis, that is the filing date. For an intent-to-use application, it is the date the applicant filed its amendment to allege use or the end of the period for filing a statement of use. A petition for reexamination must be filed within the first five years after registration.

Reexamination fits the case where a registrant launched late, or claimed use for an entire product line when only one item was on sale, or filed a specimen that was a mock-up rather than a photo of goods in commerce.

What the petition must contain

The USPTO expects a reasonable investigation, not a hunch. The petition includes a verified statement describing what you searched and what you found, with the evidence attached, for each good or service you challenge. A reasonable investigation usually includes:

• Searches of the registrant’s website, online marketplaces and app stores.
• Archived versions of those pages over the relevant period.
• Trade directories, distributor listings and industry sources.
• Checks of state business records and, where warranted, an investigator’s attempt to purchase the goods.

One failed Google search is not enough. The Director institutes only if the evidence establishes a prima facie case of nonuse for the challenged goods, and a thin petition is simply denied, with no appeal. The same investigation also serves your trademark search and clearance file, because it tells you how much real-world risk the cited mark carries.

What happens after institution

If the Director institutes, the USPTO issues an office action to the registrant requiring proof of use for each challenged good or, for expungement, evidence of excusable nonuse. The registrant may instead delete the goods. As of this writing, the response period is short, generally three months with one extension available for a fee, so registrants who ignore USPTO mail lose quickly. If the registrant fails to respond, or its evidence falls short, the challenged goods are deleted from the registration. If every listed good falls, the registration is cancelled.

The registrant can appeal an adverse decision to the Board and then to the Federal Circuit. The petitioner has no further role, which is the trade-off for a proceeding without discovery.

Choosing between expungement, reexamination and cancellation

Use this order of questions. Is the registration between three and ten years old and the goods never sold? Expungement. Is it under five years old, use-based, and the goods were not on sale as of the filing or use date? Reexamination. Does your complaint go beyond nonuse, to priority, descriptiveness, fraud or abandonment after real use? Only a cancellation before the Board can reach those.

Two more points. Once the USPTO has concluded an expungement or reexamination on particular goods, no further petition of that type may be brought on the same goods, so file once with everything you have. And a registrant facing one of these petitions should check its own maintenance file immediately; the proof of use you need to defend a reexamination is the same proof you will need for your next Section 8 filing, which we describe in when a Section 8 declaration is due. Owners who keep that evidence current, through a practice like our trademark renewal and maintenance service, rarely lose goods they actually sell.

If a registration that appears unused is blocking your application, Capitol Law Partners can run the investigation, choose the right petition and prepare the evidence the Director expects to see. Schedule a consultation.

This article is for informational purposes only and does not constitute legal advice. No attorney-client relationship is formed by this communication.

Attorney Cagatay Ersoy. Practical strategy for founders, investors, and growing companies.

Need help with this topic? See our expungement, reexamination and TTAB proceedings page or schedule a consultation.