1716.03 Instituting Expungement and Reexamination Proceedings

15 U.S.C. §1066a

(c) Initial determination; institution
- (1) Prima facie case determination, institution, and notification
  The Director shall, for each good or service identified under subsection (b)(2), determine whether the petition sets forth a prima facie case of the mark having never been used in commerce on or in connection with each such good or service, institute an ex parte expungement proceeding for each good or service for which the Director determines that a prima facie case has been set forth, and provide a notice to the registrant and petitioner of the determination of whether or not the proceeding was instituted. Such notice shall include a copy of the petition and any supporting documents and evidence that were included with the petition.

15 U.S.C. §1066b

(d) Initial determination; institution
- (1) Prima facie case determination, institution, and notification
  The Director shall, for each good or service identified under subsection (c)(2), determine whether the petition sets forth a prima facie case of the mark having not been in use in commerce on or in connection with each such good or service, institute an ex parte reexamination proceeding for each good or service for which the Director determines that the prima facie case has been set forth, and provide a notice to the registrant and petitioner of the determination of whether or not the proceeding was instituted. Such notice shall include a copy of the petition and any supporting documents and evidence that were included with the petition.

37 C.F.R. §2.92 Institution of ex parte expungement and reexamination proceedings.

Notwithstanding section 7(b) of the Act, the Director may institute a proceeding for expungement or reexamination of a registration of a mark, either upon petition or upon the Director's initiative, upon determining that information and evidence supports a prima facie case of nonuse of the mark for some or all of the goods or services identified in the registration. The electronic record of the registration for which a proceeding has been instituted forms part of the record of the proceeding without any action by the Office, a petitioner, or a registrant.

(a) Institution upon petition. For each good and/or service identified in a complete petition under § 2.91, the Director will determine if the petition sets forth a prima facie case of nonuse to support the petition basis and, if so, will institute an ex parte expungement or reexamination proceeding.
(b) Institution upon the Director's initiative. The Director may institute an ex parte expungement or reexamination proceeding on the Director's own initiative, within the time periods set forth in § 2.91(b), and for the reasons set forth in § 2.91(a), based on information that supports a prima facie case for expungement or reexamination of a registration for some or all of the goods or services identified in the registration.
(c) Director's authority.
- (1) Any determination by the Director whether to institute an expungement or reexamination proceeding shall be final and non-reviewable.
- (2) The Director may institute an expungement and/or reexamination proceeding for fewer than all of the goods and/or services identified in a petition under § 2.91. The identification of particular goods and/or services in a petition does not limit the Director from instituting a proceeding that includes additional goods and/or services identified in the subject registration on the Director's own initiative, under paragraph (b) of this section.

. . .

(f) Notice of Director's determination whether to institute proceedings.
- (1) In a determination based on a petition under § 2.91, if the Director determines that no prima facie case of nonuse has been made and thus no proceeding will be instituted, notice of this determination will be provided to the registrant and petitioner, including information to access the petition and supporting documents and evidence.
- (2) If the Director determines that a proceeding should be instituted based on a prima facie case of nonuse of a registered mark as to any goods and/or services recited in the registration, or consolidates proceedings under paragraph (e) of this section, the Director's determination and notice of the institution of the proceeding will be set forth in an Office action under § 2.93(a). If a proceeding is instituted based in whole or in part on a petition under § 2.91, the Office action will include information to access any petition and the supporting documents and evidence that formed the basis for the Director's determination to institute. Notice of the Director's determination will also be provided to the petitioner.

The USPTO will only institute an expungement or reexamination proceeding, based either on a petition or on the Director’s own initiative, in connection with the goods and/or services for which a prima facie case of nonuse for the relevant time frame has been established. See 15 U.S.C. §§1066a(c)(1), 1066b(d)(1); 37 C.F.R. §2.92. See TMEP §1716.03(a) regarding establishing a prima facie case of nonuse.

If the USPTO determines that a petition does not establish a prima facie case of nonuse as to any or all of the goods and/or services identified in the petition, the relevant proceeding will not be instituted as to those particular goods and/or services. See 37 C.F.R. §2.92(c)(2). Notice of this determination will be provided to the registrant and petitioner and will include information to access the petition and supporting documents and evidence. See 15 U.S.C. §§1066a(c)(1), 1066b(d)(1); 37 C.F.R. §2.92(f). The petition will remain in the record of the registration.

Any determination whether or not to institute an expungement or reexamination proceeding, based either on a petition or on the Director’s own initiative, is final and non-reviewable. See 15 U.S.C. §§1066a(c)(3), 1066b(d)(3); 37 C.F.R. §2.92(c)(1).

1716.03(a) Prima Facie Case of Nonuse

With respect to these proceedings, a prima facie case requires only that a reasonable predicate concerning such nonuse be established. See H.R. Rep. No. 116-645, at 8 (citing In re Pacer Tech., 338 F.3d 1348, 1351 (Fed. Cir. 2003) and In re Loew’s Theatres, Inc., 769 F.2d 764, 768 (Fed. Cir. 1985)). Thus, a prima facie case includes sufficient notice of the claimed nonuse to allow the registrant to respond to and potentially rebut the claim with competent evidence, which the USPTO must then consider before making a determination as to whether the registration should be cancelled in whole or in part, as appropriate.

For expungement and reexamination proceedings based on a petition under 37 C.F.R. §2.91, the determination of whether a prima facie case has been made is based on the evidence and information that is collected as a result of the petitioner’s reasonable investigation and set forth in the petition, along with the USPTO’s electronic record of the involved registration. See TMEP §1716.02(c)(ii) regarding evidence of nonuse.

For Director-initiated expungement and reexamination proceedings, the information and evidence available to the USPTO must establish a prima facie case of nonuse. See 37 C.F.R. §2.92(b). For these Director-initiated proceedings, the evidence and information that may be relied upon to establish a prima facie case may be from essentially the same sources as those in a petition-initiated proceeding.

If a petition-based proceeding is instituted, the petitioner will not have any further involvement. In a Director-initiated proceeding, there is no petitioner, and thus all relevant notices will be provided only to the registrant and the registrant’s attorney, if any. See TMEP §1716.04(a) regarding providing notice of institution of a proceeding. In both types of proceedings, documents associated with the proceeding will be uploaded into the registration record and will be publicly viewable through TSDR. This includes any prima facie evidence that the USPTO relied upon to institute a Director-initiated proceeding.

1716.03(b) Consolidating Proceedings

To ensure consistency and promote efficiency, the Director may consolidate proceedings involving the same registration, including a Director-initiated proceeding with a petition-initiated proceeding. See 37 C.F.R. §2.92(e)(1). Consolidated proceedings are related parallel proceedings that may include both expungement and reexamination grounds. Id.

If two or more petitions under 37 C.F.R. §2.91 directed to the same registration have been submitted and no ex parte expungement or reexamination proceeding has been instituted as to either, or the Director wishes to institute an ex parte expungement or reexamination proceeding on the Director’s own initiative under 37 C.F.R. §2.92(b) concerning a registration for which one or more petitions under 37 C.F.R. §2.91 was submitted, the Director may elect to institute a single proceeding. 37 C.F.R. §2.92(e)(2). For example, if two or more petitions directed to the same registration identify goods and/or services in different classes, but each petitioner provides the required evidence and complies with the requirements of 37 C.F.R. §2.91, the Director may institute a single proceeding for the convenience of both the USPTO and the registrant. Similarly, if two or more petitions directed to the same registration identify various goods and/or services with some overlap, the Director may institute a single proceeding that covers all of the goods and/or services for which a prima facie case concerning nonuse is established.