Challenging a Trademark: The Difference Between an Expungement and a Reexamination
You have the right to challenge another party’s trademark on the basis of non-use. The United States Patent and Trademark Office (USPTO) explains that there are two main options available for this type of trademark challenge:
- Expungement; and
- Reexamination.
At Perkins Law — Brand Protection, we handle all types of trademark challenges. Within this article, our Florida trademark lawyer provides an overview of the key things to know about the differences between expungement and reexamination in trademark challenges.
Expungement vs. Reexamination: An Overview of the Statutory Basis and the Purpose
A trademark must be used in a commercial context in order to be valid and protectable. Under the Trademark Modernization Act of 2020 (TMA), the USPTO established two new procedures to challenge registered trademarks:
- Expungement (15 U.S.C. § 1066a)
- Reexamination (15 U.S.C. § 1052)
Both proceedings are initiated through USPTO petitions. However, they target different deficiencies in trademark use. Expungement is used to cancel trademarks that were never used in commerce. Reexamination targets marks that were not in use on or before the relevant filing date.
Expungement: Nonuse at Any Time Post-Registration
Expungement allows a third party—or the USPTO itself—to request cancellation of some or all goods/services in a registration on the grounds that the mark was never used in commerce in connection with those goods/services. The procedure is available beginning three years after the registration date and must be brought within 10 years of registration.
To be clear, the burden of proof is on the petitioner to show a reasonable investigation failed to uncover use in commerce. Notably, the registrant can rebut the petition by providing evidence of use or excusable nonuse. If you have any questions about challenging a trademark for nonuse post-registration, a trademark lawyer can help.
Reexamination: Improper Use Claim at Filing
On the other hand, reexamination is used to challenge a registration where the trademark owner allegedly was not using the mark in commerce on or before the relevant date. It applies only to registrations based on use in commerce under § 1(a), or intent-to-use applications where a statement of use under § 1(d) has been filed. The challenge must be made within five years of the registration date.
Similar to expungement, reexamination places the burden on the registrant to show the mark was in use as claimed. Strong, compelling evidence is a must to effectively challenge a trademark on these grounds. If you have any questions about challenging a trademark on the basis of reexamination, an experienced trademark lawyer can help.
Consult With Our Florida Trademark Lawyer for Immediate Help With Your Case
At Perkins Law — Brand Protection, our Florida trademark attorney provides solutions-focused guidance and support to clients. If you have any questions about challenging a trademark—whether through expungement or reexamination—we can help. Contact us today for a fully confidential consultation. We handle trademark law matters throughout all of South Florida, including in Miami-Dade County, Palm Beach County, Broward County, and Martin County, and nationwide.
Source:
uspto.gov/trademarks/protect/requesting-expungement-or-reexamination-proceeding?utm_campaign=subscriptioncenter&utm_content=&utm_medium=email&utm_name=&utm_source=govdelivery&utm_term=
