Four Things to Know About Trademark Expungements
In certain circumstances, trademarks can be expunged. The United States Patent and Trademark Office (USPTO) explains that expungement is a legal process where one can move to cancel another party’s trademark on the grounds that they never actually used it in commerce as is required by federal law. Here, our Florida trademark attorney highlights four of the most important things that you should know about trademark expungements.
- An Expungement Makes it as if the Trademark was Never Registered
First and foremost, it is important to understand what a trademark expungement actually does if it is successful. Under 15 U.S.C. § 1066A, a trademark expungement petition that is approved by the USPTO results in the cancellation of a registration on the grounds that the mark was never used in commerce in connection with the identified goods or services. In other words, the registration is treated as though it was never valid from inception. No legal rights are accrued from it. Once expunged, the registration is removed from the USPTO’s Principal Register.
- An Expungement Can Be Filed Within Three and Ten Years of Registration
Trademark expungement cases are time-sensitive. Indeed, there is a specific window in which these types of petitions can be filed. Expungement proceedings may be initiated against a trademark registration between the third and tenth year after its registration date. A petitioner must carefully monitor registration dates to file within this statutory window. Notably, the USPTO may also initiate an expungement on its own initiative within the same period.
- An Expungement Puts the Burden of Proof on the Petitioner
Are you preparing to take action to get another party’s trademark expunged? If so, that means that you will be the petitioner in the legal proceedings. It also means that the burden of proof rests on your shoulders. You must establish a prima facie case that the trademark was never used in commerce with some or all goods or services listed. You need comprehensive, well-organized evidence that shows that, despite registration, there was simply no valid commercial use of the trademark.
- An Expungement is Not the Only Option to Challenge a Trademark
Finally, you should remember that expungement is not the only way to challenge another party’s trademark. Quite the contrary, expungement is one tool among several available to challenge a registered trademark. Some include reexamination (for marks not in use at registration), cancellation (under § 14 of the Lanham Act, 15 U.S.C. § 1064), and opposition during the initial registration process. Each of these tools has its own distinct procedural rules, time limits, and legal grounds. A Florida trademark expungement attorney can help you determine the best path forward in your case.
Speak to Our Florida Trademark Expungement Lawyer Today
At Perkins Law — Brand Protection, our Florida trademark lawyer is well-versed in expungement cases. If you have any specific questions or concerns about trademark expungement, we are more than ready to help. Contact us now for a fully confidential initial case assessment. Our firm handles trademark cases from our law office in Boca Raton and we represent clients throughout Florida.
Source:
uspto.gov/trademarks/protect/requesting-expungement-or-reexamination-proceeding
