Effective December 18, 2021, the Trademark Modernization Act of 2020 (TMA) introduced several tools to clear the United States Patent and Trademark Office (USPTO) database from unused registered marks.
In this article, you will discover what trademark expungement is and how to expunge an unused trademark.
Trademark Expungement vs. Reexamination – Understanding the Difference
Under US law, trademark rights come from their use in business. The owner must police the trademark and prevent unauthorized third parties from infringing the mark. Many trademark owners register with the USPTO for superior protection.
Not long ago, applying for trademark registration with the USPTO could result in a lengthy and costly experience. In addition to the processing timeframe, many trademark applicants would face refusals due to the likelihood of confusion with unused trademarks.
Over the years, the number of unused trademarks registered in USPTO’s database became overwhelming, which led to the introduction of rules to modernize and clear the database.
The new TMA encourages business owners and entrepreneurs to attack and cancel trademark registrations based on non-use. A trademark expungement happens when an applicant attacks a trademark registered with USPTO because it has never been used in commerce.
If a certain trademark was neither used in the past nor now, it is possible to file for expungement. Another feasible option introduced by the TMA was the reexamination of trademarks, which cannot be confused with expungement.
When filing for reexamination, the applicant requests the USPTO to examine a trademark file one more time to determine whether it has been actively used in commerce.
What Are the Requirements for Trademark Expungement with USPTO? – In Detail
The first requirement for filing for expungement with USPTO is demonstrating a registered trademark has never been used in conjunction with goods or services. Registration is fundamental for trademark protection, but the ownership rights over a trademark depend on its active use in business.
Additionally, the TMA specifies that a request for expungement must be filed between three and ten years after the trademark’s date of registration.
As expected, every rule has its exception. USPTO provides that “until December 27, 2023, however, a proceeding may be requested for any registration at least three years old, regardless of the ten-year limit.”
Please note that most owners of registered trademarks with less than three years would have time to prevent expungement by actively using the mark in commerce. Accordingly, filing for expungement is not a reliable method if you are trying to attack younger registrations.
It is important to recognize unused trademarks that are eligible neither for expungement nor reexamination, which include:
- Registered marks that were properly used during the application process, but are currently unused
- Effective on December 27, 2023, any trademark registration with more than ten years of registration, and
- Registered marks that were not properly used during the application process, but currently have more than five years since the registration date
In such cases, prospective trademark challengers must consult with an expert trademark attorney to identify the possibility to file for cancellation with USPTO.
Is Trademark Expungement an Ideal Solution? – Immediately Seek Expert Legal Guidance
Waste no time with uncertainty. Contact Trademark Attorney Romy B. Jurado today by calling (305) 921-0976 or emailing [email protected] to find a cost-effective solution for your case.
