1716.02 Petitions to Request Expungement or Reexamination

Any person may file a petition requesting institution of an expungement or reexamination proceeding. 37 C.F.R. §2.91(a). Only one registration may be specified per petition, and a petitioner who wishes to request both expungement and reexamination proceedings for the same registration must file separate petitions for each type of proceeding. See 37 C.F.R. §§2.91(a), (c)(2).

Reexamination and expungement petitions are intended to allow third parties to bring nonuse of registered marks to the attention of the USPTO. Therefore, a registrant whose mark was not used in commerce, or is no longer used in commerce, should not file a petition against its own registration, but instead should voluntarily surrender the registration for cancellation in its entirety or amend the registration to delete the relevant goods and/or services, as appropriate. See TMEP §1608 regarding surrendering a registration for cancellation and §1609.03 regarding deletion of goods and/or services in a registration. There is a $0 fee for voluntary deletions of goods and/or services from a registration prior to submission of a post-registration maintenance document. See 37 C.F.R. §2.6(a)(11)(iii). There is no fee for voluntarily surrendering a registration for cancellation. TMEP §1608.

1716.02(a) Basis for the Petition

A petition for expungement must allege that the mark "has never been used in commerce on or in connection with some or all of the goods and/or services recited in the registration." 37 C.F.R. §2.91(a)(1).

A petition for reexamination must allege that the trademark "was not in use in commerce on or in connection with some or all of the goods and/or services recited in the registration on or before the relevant date," which, for any particular goods and/or services, is determined as follows:

In a use-based application for registration of a mark with an initial filing basis under §1(a) for the goods and/or services listed in the petition, and not amended at any point to be filed pursuant to §1(b), the relevant date is the filing date of the application; or
In an intent-to-use application for registration of a mark with an initial filing basis or amended basis of §1(b) for the goods and/or services listed in the petition, the relevant date is the later of the filing date of an amendment to allege use identifying the goods and/or services listed in the petition, pursuant to §1(c), or the expiration of the deadline for filing a statement of use for the goods and/or services listed in the petition, pursuant to §1(d), including all approved extensions thereof.

37 C.F.R §2.91(a)(2).

1716.02(b) Requirements for a Complete Petition

37 C.F.R. §2.91 Petition for expungement or reexamination.

. . .

(c) Requirements for complete submission. Petitions under this section must be timely filed through TEAS. Only complete petitions under this section will be considered by the Director under § 2.92, and, once complete, may not be amended by the petitioner. A complete petition must be made in writing and must include the following:
- (1) (1) The fee required by § 2.6(a)(26);
- (2) The U.S. trademark registration number of the registration subject to the petition;
- (3) The basis for petition under paragraph (a) of this section;
- (4) The name, domicile address, and email address of the petitioner;
- (5) If the domicile of the petitioner is not located within the United States or its territories, a designation of an attorney, as defined in § 11.1 of this chapter, who is qualified to practice under § 11.14 of this chapter;
- (6) If the petitioner is, or must be, represented by an attorney, as defined in § 11.1 of this chapter, who is qualified to practice under § 11.14 of this chapter, the attorney's name, postal address, email address, and bar information under § 2.17(b)(3);
- (7) Identification of each good and/or service recited in the registration for which the petitioner requests that the proceeding be instituted on the basis identified in the petition;
- (8) A verified statement signed by someone with firsthand knowledge of the facts to be proved that sets forth in numbered paragraphs:
  - (i) The elements of the reasonable investigation of nonuse conducted, as defined under paragraph (d) of this section, where for each source of information relied upon, the statement includes a description of how and when the searches were conducted and what the searches disclosed; and
  - (ii) A concise factual statement of the relevant basis for the petition, including any additional facts that support the allegation of nonuse of the mark in commerce on or in connection with the goods and services as specified in paragraph (a) of this section; and
- (9) A clear and legible copy of all documentary evidence supporting a prima facie case of nonuse of the mark in commerce and an itemized index of such evidence. Evidence that supports a prima facie case of nonuse may include, but is not limited to:
  - (i) Verified statements;
  - (ii) Excerpts from USPTO electronic records in applications or registrations;
  - (iii) Screenshots from relevant web pages, including the uniform resource locator (URL) and access or print date;
  - (iv) Excerpts from press releases, news articles, journals, magazines, or other publications, identifying the publication name and date of publication; and
  - (v) Evidence suggesting that the verification accompanying a relevant allegation of use was improperly signed.

Under 37 C.F.R. §2.91(c), only a complete petition for expungement or reexamination will be considered.

A complete petition must be made in writing, filed through TEAS and include:

(1) The fee required by 37 C.F.R. §2.6(a)(26);
(2) The U.S. trademark registration number of the registration subject to the petition;
(3) The basis for the petition under 37 C.F.R. §2.91(a) (see TMEP §1716.02(a));
(4) The name, domicile address, and email address of the petitioner;
(5) If the domicile of the petitioner is not located within the United States or its territories, a designation of an attorney, as defined in 37 C.F.R. §11.1, who is qualified to practice under 37 C.F.R. §11.14 (see TMEP §601 regarding the requirement for representation based on the owner’s domicile and §602 regarding persons authorized to practice before the USPTO in trademark matters);
(6) If the petitioner is, or must be, represented by an attorney, the attorney’s name, postal address, email address, and bar information under 37 C.F.R. §2.17(b)(3) (see TMEP §602.01(a) regarding required attorney identification information);
(7) Identification of each good and/or service recited in the registration for which the petitioner requests that the proceeding be instituted on the basis identified in the petition;
(8) A verified statement signed by someone with firsthand knowledge of the facts to be proved that sets forth in numbered paragraphs:
- (i) The elements of the reasonable investigation of nonuse conducted, as defined under 37 C.F.R. §2.91(d), where for each source of information relied upon, the statement includes a description of how and when the searches were conducted and what the searches disclosed (see TMEP §§1716.02(c)-(c)(ii) regarding the requirements for a reasonable investigation); and
- (ii) A concise factual statement of the relevant basis for the petition, including any additional facts that support the allegation of nonuse of the mark in commerce on or in connection with the goods and services as specified in 37 C.F.R. §2.91(a); and
(9) A clear and legible copy of all documentary evidence supporting a prima facie case of nonuse of the mark in commerce and an itemized index of such evidence (see TMEP §1716.02(c)(ii) regarding evidence for a reasonable investigation).

37 C.F.R. §2.91(c).

Once complete, the petitioner may not amend the petition. Id.

If a petition fails to include all of the elements required by 37 C.F.R. §2.91(c), the USPTO will issue a letter giving the petitioner 30 days to perfect the petition by complying with the outstanding requirements, if otherwise appropriate. The 30-day letter will not include a determination regarding whether the petition establishes a prima facie case, and the petitioner may not include additional evidence in its response. The petitioner may only provide evidence specifically requested in the 30-day letter. If the petitioner includes any other additional evidence in its response, the evidence will not be considered.

If petitioner does not comply with the outstanding requirements within the time allowed or does not timely respond to the 30-day letter, the petition will not be considered on the merits and the relevant proceeding will not be instituted. The determination of whether or not to institute an expungement or reexamination proceeding is final and non-reviewable. 15 U.S.C. §§1066a(c)(3), 1066b(d)(3); 37 C.F.R. §2.92(c)(1).

1716.02(c) Reasonable Investigation Requirement

Under 37 C.F.R. §2.91(d), a petitioner must demonstrate that a bona fide attempt has been made to determine if the relevant registered mark was never used in commerce (for expungement petitions) or was not in use in commerce as of the relevant date (for reexamination petitions) on or in connection with the goods and/or services identified in the petition by conducting a reasonable investigation. The petition must include a verified statement that specifies the elements of this reasonable investigation for each source of information relied upon. 37 C.F.R. §2.91(c)(8). In particular, the statement must describe the sources searched, how and when the searches were conducted, and what information and evidence, if any, the searches produced. Id.

1716.02(c)(i) Definition of Reasonable Investigation

A reasonable investigation is an appropriately comprehensive search that is calculated to return information about the underlying inquiry from reasonably accessible sources where evidence concerning use of the mark during the relevant time period on or in connection with the relevant goods and/or services would normally be found. 37 C.F.R. §2.91(d)(1). Thus, what constitutes a reasonable investigation is a case-by-case determination and may vary depending on the circumstances. However, any investigation should focus on the mark in the registration and its use in the relevant marketplace on the identified goods and/or services, keeping in mind their scope and applicable trade channels.

The petition should establish that the petitioner’s investigation included a search covering the relevant channels of trade and advertising for the identified goods and/or services but did not reveal any relevant use of the mark consistent with the definition of "use in commerce" set forth in Section 45 of the Trademark Act, 15 U.S.C §1127, and in relevant case law. See TMEP §§901-901.03 regarding use in commerce.

1716.02(c)(ii) Sources of Information and Evidence

The sources of information and evidence provided in the petition should include reasonably accessible sources that can be publicly disclosed, because petitions requesting institution of expungement and reexamination proceedings will be entered in the registration record and be publicly viewable through the USPTO’s Trademark Status & Document Retrieval (TSDR) database. The number and nature of the sources a petitioner must check in order for its investigation to be considered reasonable, and the corresponding evidence that would support a prima facie case, will vary depending on the goods and/or services involved, their normal trade channels, and whether the petition is for expungement or reexamination.

For purposes of expungement and reexamination proceedings, nonuse is necessarily determined in reference to a time period that includes past activities, not just current activities. Accordingly, a petitioner’s investigation normally would include research into past usage of the mark for the goods and/or services at issue in the petition and thus may include a search for archival evidence, including cached web pages from sources such as Wayback Machine®.

A single search using an internet search engine likely would not be considered a reasonable investigation. See H.R. Rep. No. 116-645, at 15 (2020). However, a reasonable investigation does not require a showing that all of the potentially available sources of evidence were searched. Generally, an investigation that produces reliable and credible evidence of nonuse during the relevant time period may be considered sufficient.

Appropriate sources of evidence and information for a reasonable investigation may include, but are not limited to:

State and Federal trademark records;
Internet websites and other media likely to or believed to be owned or controlled by the registrant;
Internet websites, other online media, and publications where the relevant goods and/or services likely would be advertised or offered for sale;
Print sources and webpages likely to contain reviews or discussions of the relevant goods and/or services;
Records of filings made with or of actions taken by any State or Federal business registration or regulatory agency;
The registrant’s marketplace activities, including, for example, any attempts to contact the registrant or purchase the relevant goods and/or services;
Records of litigation or administrative proceedings reasonably likely to contain evidence bearing on the registrant’s use or nonuse of the registered mark; and
Any other reasonably accessible source with information establishing that the mark was never in use in commerce (expungement), or was not in use in commerce as of the relevant date (reexamination), on or in connection with the relevant goods and/or services.

37 C.F.R. §2.91(d)(2).

Evidence supporting a prima facie case of nonuse may be in the form of verified statements, screenshots from web pages, and excerpts from press releases, news articles, journals, magazines, or other publications, among other types of evidence. See 37 C.F.R. §2.91(c)(9). Examples of documentary evidence to support negative search results include screenshots or website printouts capturing the null result.

Any evidence consisting of screenshots from web pages must include the URL and access or print date. 37 C.F.R §2.91(c)(9)(iii). Any evidence consisting of excerpts from press releases, news articles, journals, magazines, or other publications must identify the publication name and the date of publication. 37 C.F.R. §2.91(c)(9)(iv).

Petitioner may also include evidence suggesting that the verification accompanying a relevant allegation of use was improperly signed. 37 C.F.R. §2.91(c)(9)(v).

1716.02(d) Notice of Petition for Expungement or Reexamination

When a petition requesting institution of expungement or reexamination proceedings is filed, the petition will be uploaded into the registration record and be publicly viewable through TSDR. The USPTO will send a courtesy email notice of the petition to the registrant and/or the registrant’s attorney, as appropriate, if an email address is of record. The registrant may not respond to this courtesy notice, and no response from the registrant will be accepted except in response to an Office action issued after institution of a proceeding under 37 C.F.R. §2.92.

For purposes of correspondence related to these proceedings, the "registrant" is the owner/holder currently listed in USPTO records. If there has been a change of ownership, it is the registrant’s or the new owner’s responsibility to provide such information to the USPTO. See TMEP §502.01. Therefore, it is in the best interests of both the prior and new owners to provide evidence of changes of title, either by recordation of an assignment or otherwise, in a timely manner.