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).