1716.02(b)    Requirements for a Complete Petition

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

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  • (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).