1716.04 Procedures for Expungement and Reexamination Proceedings
1716.04(a) Notice of Institution and Office Action
When a determination regarding institution of an expungement or reexamination proceeding has been made, the USPTO will provide notice of the determination, in accordance with the correspondence rules in 37 C.F.R. §2.18. 37 C.F.R. §2.92(f)(2). See TMEP §1716.02(d) regarding the identity of the registrant for purposes of correspondence related to these proceedings. If the proceeding is petition-based, the petitioner will also be notified of the determination whether or not to institute the proceeding. 15 U.S.C. §§1066a(c)(1), 1066b(d)(1); 37 C.F.R §2.92(f)(2).
If a proceeding is instituted, the notice of institution will include an Office action requiring the registrant to provide evidence of use. See 15 U.S.C. §§1066a(e), 1066b(f); 37 C.F.R §§2.92(f)(2), 2.93(a). Office actions in these proceedings are substantively limited in scope to the question of use in commerce, but the registrant remains subject to the requirements of 37 C.F.R. §2.11 (requirement for representation), 37 C.F.R. §2.23 (requirement to correspond electronically), and 37 C.F.R. §2.189 (requirement to provide a domicile address). Thus, the registrant may be required to furnish domicile information as necessary to determine if the registrant must be represented by a U.S.-licensed attorney. In addition, registrants will be required to provide a valid email address for correspondence, if one is not already in the record, and to update the email address as necessary to facilitate communication with the USPTO.
See TMEP §301.01 regarding the mandatory electronic filing of trademark documents, §§601-601.01(b)(1) regarding determining an owner’s domicile, and §1612 regarding the requirement for the correspondence e-mail and domicile address of registrant.
1716.04(b) Responding to the Initial Office Action
The registrant must respond to the initial Office action via TEAS within three months of the issue date, but, within that time period, may request a one-month extension of time to respond, which requires the payment of the fee set forth in 37 C.F.R. §2.6(a)(27). 37 C.F.R. §2.93(b)(1).
The response must contain documentary evidence of use supported by information, exhibits, affidavits, or declarations as may be reasonably necessary to rebut the prima facie case of nonuse by establishing that the required use in commerce has been made on or in connection with the goods and/or services at issue and be properly signed. See 37 C.F.R. §§2.92(f)(2), 2.93(a), (b)(3). See TMEP §611.03(b) regarding signature of responses to Office actions and §1716.04(d) regarding submitting a response that deletes some or all of the goods and/or services at issue in the proceeding or surrenders the entire registration for cancellation.
When a timely response by the registrant is a bona fide attempt to advance the proceeding and is a substantially complete response to the Office action, but consideration of some matter or compliance with a requirement has been omitted, the registrant may be granted 30 days, or to the end of the time period for response set forth in the Office action to which the substantially complete response was submitted, whichever is longer, to resolve the issue. See 37 C.F.R. §2.93(b)(2). Granting the registrant additional time in such circumstances does not extend the time for filing an appeal to the Trademark Trial and Appeal Board (TTAB) or a petition to the Director.
If the registrant timely responds to the initial Office action in the expungement or reexamination proceeding, the USPTO will review the response to determine if use of the mark in commerce at the relevant time has been established for each of the goods and/or services at issue. If the USPTO finds, during the course of the proceeding, that the registrant has: (1) demonstrated relevant use of the mark in commerce sufficient to rebut the prima facie case, (2) demonstrated excusable nonuse in appropriate expungement cases, or (3) deleted goods and/or services, such that no goods and/or services remain at issue, the proceeding will be terminated, and the USPTO will issue a notice of termination under 37 C.F.R. §2.94. See TMEP §1716.04(e) regarding termination of expungement and reexamination proceedings.
If the registrant fails to timely respond to the initial Office action or timely submit a request for extension, the proceeding will terminate and the registration will be cancelled, in whole or in part, as appropriate. See TMEP §1716.04(f) regarding requesting reinstatement after cancellation for failure to respond to an Office action.
To ensure that registrants are aware of any correspondence or activity associated with any ex parte cancellation proceedings concerning their registered marks, registrants must monitor the status of their registrations in the USPTO’s electronic systems at least every three months after notice of the institution of an expungement or reexamination proceeding until the registrant receives a notice of termination under 37 C.F.R. §2.94. See 37 C.F.R. §2.23(d)(3).
1716.04(c) Evidence of Use or Excusable Nonuse
Documentary evidence of use provided by the registrant need not be the same as that required under the USPTO’s rules of practice for specimens of use under §1(a), but must be consistent with the definition of "use in commerce" in Section 45 of the Trademark Act, 15 U.S.C §1127, and in relevant case law. 15 U.S.C. §§1066a(e), 1066b(f); 37 C.F.R. §2.93(b)(7); See TMEP §§901-901.03 regarding use in commerce.
Evidence must be accompanied by a verified statement. Any evidence of use must be accompanied by a verified statement signed by someone with firsthand knowledge of the facts to be proved, setting forth in numbered paragraphs factual information about the use of the mark in commerce, including a description of the supporting evidence and how the evidence demonstrates use of the mark in commerce as of any relevant date for the goods and/or services at issue. 37 C.F.R. §2.93(b)(7). Evidence must be labeled, and an itemized index of the evidence must be provided such that the particular goods and/or services supported by each item submitted as evidence of use are clear. Id.
Types of evidence. Although testimonial evidence may be submitted, it should be supported by corroborating documentary evidence. In most cases, the documentary evidence of use will include specimens of use, but there may be situations where, for example, specimens for particular goods and/or services are no longer available, even if they may have been available at the time the registrant filed an allegation of use. In these cases, the registrant may provide additional evidence and explanations, supported by declaration, to demonstrate how the mark was used in commerce at the relevant time. Generally, because the registration file has already been considered in instituting the proceeding based on a prima facie case of nonuse, merely resubmitting the same specimen of use previously submitted in support of registration or maintenance thereof, or a verified statement alone, without additional supporting evidence, will likely be insufficient to rebut a prima facie case of nonuse.
Evidence must demonstrate use during the relevant time period. For reexamination proceedings, the registrant’s evidence of use must demonstrate use of the registered mark in commerce on or in connection with the goods and/or services at issue on or before the relevant date established under 37 C.F.R. §2.91(a)(2). See 37 C.F.R. §2.93(b)(6)(i). Specifically, if registration of the mark was based on an application with an initial filing basis under §1(a) for the goods and/or services listed in the petition or subject to a Director-initiated proceeding, and not amended at any point to be filed pursuant to §1(b), the relevant date is the filing date of the application. 37 C.F.R. §2.91(a)(2)(i). Or, if registration of the mark was based on an application with an initial filing basis or amended basis of §1(b) for the goods and/or services listed in the petition or subject to a Director-initiated proceeding, 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)(ii). The relevant dates set forth in 37 C.F.R. §2.91(a)(2)(i) -(ii) are considered for each good and/or service identified in a petition for reexamination. Under 37 C.F.R. §2.92(b), a Director-initiated proceeding may be instituted for the same reasons as those appropriate for a petition, and the relevant dates are therefore the same for a Director-initiated proceeding, even though there was no petition.
For expungement proceedings, the registrant’s evidence of use must show that the use occurred before the filing date of the petition to expunge under 37 C.F.R. §2.91(a), or before the date the proceeding was instituted by the Director under 37 C.F.R. §2.92(b), as appropriate. 37 C.F.R. §2.93(b)(5)(i).
Evidence of excusable nonuse for registrations with a sole registration basis under §44(e) or §66(a). A registrant in an expungement proceeding may provide verified statements and evidence to establish that any nonuse as to particular goods and/or services with a sole registration basis under §44(e) or §66(a) is due to special circumstances that excuse such nonuse, as set forth in 37 C.F.R. §2.161(a)(6)(ii). See 15 U.S.C. §1066a(f); 37 C.F.R. §2.93(b)(5)(ii). However, excusable nonuse may not be considered for any goods and/or services registered under §1 of the Trademark Act. See 37 C.F.R. §2.93(b)(5)(ii).
See TMEP §1604.11 regarding excusable nonuse and §1613.11 regarding excusable nonuse for registered extensions of protection.
1716.04(d) Deleting Goods and/or Services or Surrendering the Registration
A registrant may respond to an Office action in an expungement or reexamination proceeding by submitting a response that deletes some or all of the goods and/or services at issue in the proceeding or surrenders the entire registration for cancellation. See 37 C.F.R. §2.93(d). An acceptable deletion will be immediately effective, and the deleted goods and/or services may not be reinserted into the registration. 37 C.F.R. §2.93(d)(1). No other amendment to the identification of goods and/or services in a registration will be permitted as part of the proceeding. 37 C.F.R. §2.93(d). If goods and/or services that are subject to an expungement or reexamination proceeding are deleted after the filing, and before the acceptance, of an affidavit or declaration under §8 or §71, the deletion will be subject to the fee under 37 C.F.R. §2.161(c) or 37 C.F.R. §7.37(c). 37 C.F.R. §2.93(d)(1).
In addition, a registrant may submit a separate request to surrender the subject registration for cancellation under 37 C.F.R. §2.172 or a request to amend the registration under 37 C.F.R. §2.173. However, the mere filing of these requests will not constitute a sufficient response to an Office action requiring the registrant to provide evidence of use of the mark in the expungement or reexamination proceeding. The registrant must affirmatively notify the USPTO of the separate request in a timely response to the Office action. See 37 C.F.R. §2.93(d)(2).
Any deletion of goods and/or services at issue in a pending proceeding requested in a response, a surrender for cancellation under 37 C.F.R. §2.172, or an amendment of the registration under 37 C.F.R. §2.173, shall render the proceeding moot as to those goods and/or services, and the USPTO will not make any further determination regarding the registrant’s use of the mark in commerce as to those goods and/or services.
See TMEP §1604.09(b) regarding deletion of goods/services/classes from a registration after submission and prior to acceptance of a §8 affidavit or declaration, §1608 regarding surrendering a registration for cancellation, §1609.03 regarding deletion of goods and/or services in a registration where no fee is required, and §1613.09(b) regarding deletion of goods/services/classes from a registration after submission and prior to acceptance of a §71 affidavit or declaration.
1716.04(e) Final Action and Notice of Termination
If the registrant’s timely response to a nonfinal Office action in an expungement or reexamination proceeding fails to establish use of the mark in commerce at the relevant time (or to sufficiently establish excusable nonuse, if applicable) for all of the goods and/or services at issue, or otherwise fails to comply with all outstanding requirements, the USPTO will issue a final action. 37 C.F.R. §2.93(c)(1).
In an expungement proceeding, the final action will include the examiner’s decision that the registration should be cancelled for each good or service challenged in the petition and/or Director-initiated proceeding for which the mark was determined to have never been used in commerce or for which no excusable nonuse was established.
In a reexamination proceeding, the final action will include the examiner’s decision that the registration should be cancelled for each good and/or service challenged in the petition and/or Director-initiated proceeding for which it was determined the mark was not in use in commerce on or before the relevant date.
As appropriate, in either an expungement or reexamination proceeding, the final action will include the examiner’s decision that the registration should be cancelled for noncompliance with any requirement set forth in a previous Office action under 37 C.F.R. §§2.11, 2.23, or 2.189.
If a final action is issued, the registrant will have three months to file a request for reconsideration or an appeal to the TTAB, if appropriate. 37 C.F.R. §2.93(c)(1). This deadline may not be extended.
If the registrant fails to timely appeal or file a request for reconsideration that rebuts the prima facie case of nonuse and establishes use of the mark in commerce at the relevant time for all goods and/or services that remain at issue in a final action (or that deletes the remaining goods and/or services at issue), the USPTO will issue a notice of termination of the proceeding and then cancel the registration in whole or in part as appropriate. 37 C.F.R. §2.94. The notice will set forth the goods and/or services for which relevant use was, or was not, established, and any requirements with which the registrant failed to comply. See 37 C.F.R. §2.93(c)(3)(ii). The notice of termination is a statement intended to memorialize the ultimate outcome of the proceedings and is not itself reviewable on petition or appeal.
If the USPTO determines that the required use in commerce (or excusable nonuse, in appropriate cases) was not established, the notice of termination will indicate the goods and/or services for which the registration will be cancelled. See 37 C.F.R. §2.94. If the goods and/or services for which use (or excusable nonuse) was not demonstrated are the only goods and/or services in the registration, or there remain any additional outstanding requirements, the entire registration will be cancelled. However, if the determination of nonuse relates only to a portion of the goods and/or services in the registration, and there are no other outstanding requirements, the notice of termination will indicate that registration will be cancelled in part, as appropriate. A notice of termination will not issue until all outstanding issues are satisfactorily resolved (and thus no cancellation is necessary) or the time for appeal has expired or any appeal proceeding has terminated. Petitioners and other interested parties may monitor the progress of a proceeding by reviewing the status and associated documents through TSDR.
If a notice of termination issues in a proceeding where the USPTO determines that the registration should be cancelled for some or all of the goods and/or services, the USPTO will then cancel the registration, in whole or in part, as appropriate. See 15 U.S.C. §§1066a(g), 1066b(g); 37 C.F.R. §2.94.
Registrations cancelled in whole or in part will be published in the electronic Trademark Official Gazette. In addition, the USPTO will issue an updated registration certificate for any registration cancelled in part.
1716.04(f) Requesting Reinstatement After Cancellation for Failure to Respond
If a registration is cancelled, in whole or in part, because of a failure to respond to a nonfinal or final Office action in an expungement or reexamination proceeding, and that failure to respond is due to an extraordinary situation, the registrant may file a petition requesting reinstatement of the registration, in whole or in part, and resumption of the proceeding. See 37 C.F.R §2.146(a)(5). The petition must be filed no later than two months after the date of actual knowledge of the cancellation of the registration, in whole or in part, and may not be filed later than six months after the date of cancellation in TSDR. 37 C.F.R. §2.146(d)(2)(iv). In addition, the petition must include a response to the Office action or an appeal to the TTAB (if the registrant failed to respond to a final action). 37 C.F.R. §2.146(c)(2).
1716.04(g) Estoppel
Upon termination of an expungement proceeding in which it was established that the registered mark was used in commerce on or in connection with any of the goods and/or services at issue in the proceeding prior to the date a petition to expunge was filed under 37 C.F.R. §2.91 or the Director-initiated proceedings were instituted under 37 C.F.R. §2.92, no further ex parte expungement proceedings may be instituted as to those particular goods and/or services. 15 U.S.C. §1066a(j)(2); 37 C.F.R. §2.92(d)(1). However, subsequent reexamination proceedings for marks registered under Section 1 are not barred under these circumstances because reexamination proceedings involve a question of whether the mark was in use in commerce as of a particular relevant date, whereas earlier expungement proceedings would only have involved a determination of whether the mark was never used. Proof of use sufficient to rebut a prima facie case of nonuse in an expungement proceeding might not establish use in commerce as of a particular relevant date, as required in a reexamination proceeding.
Upon termination of a reexamination proceeding in which it was established that the registered mark was used in commerce on or in connection with any of the goods and/or services at issue, on or before the relevant date at issue in the proceedings, no further ex parte expungement or reexamination proceedings may be instituted as to those particular goods and/or services. See 15 U.S.C. §1066b(j)(2); 37 C.F.R. §2.92(d)(2).
1716.04(h) Co-pending Proceedings
Once an expungement proceeding has been instituted for a particular registration and is pending, no later expungement proceeding may be instituted for that registration with respect to the same goods and/or services at issue in the pending proceeding. 15 U.S.C. §1066a(j)(1); 37 C.F.R. §2.92(d)(3). In addition, while a reexamination proceeding is pending against a particular registration, no later expungement or reexamination proceeding may be instituted for that registration with respect to the same goods and/or services at issue in the pending proceeding. See 15 U.S.C. §1066b(j)(1); 37 C.F.R. §2.92(d)(4).
For the purposes of these rules, the wording "same goods and/or services" refers to identical goods and/or services that are the subject of the pending proceeding or the prior determination. Thus, for example, if a subsequent petition for reexamination identifies goods that are already the subject of a pending reexamination proceeding and goods that are not, only the latter goods could potentially be the subject of a new proceeding. The fact that there is some overlap between the goods and/or services in the pending proceeding and those identified in a petition would not preclude the goods and/or services that are not the same from being the subject of a new proceeding, if otherwise appropriate. This situation is addressed in 37 C.F.R. §2.92(c)(2), which permits the Director to institute a proceeding on petition for fewer than all of the goods and/or services identified in the petition.