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.