One of the requirements for establishing and maintaining trademark rights is using that mark. More accurately, an owner of a federally registered trademark must use their mark in commerce in the United States in connection with the goods or services identified in the registration. But while the USPTO generally requires proof of use to acquire and preserve federal registrations, there are exceptions to the rule that inadvertently enable a trademark owner to protect goods or services they have never used in connection with their mark.

In an effort to clean up unused marks from the Federal Register and make way for new applications, Congress introduced expungement proceedings under the Trademark Modernization Act (“TMA”) in 2020. Expungement proceedings allow third parties to petition to cancel identified goods or services of marks if, after a “reasonable investigation,” it can be shown that an owner of a federally registered trademark has never used the mark in commerce in the United States in connection with the goods or services at issue. If the registrant of the allegedly unused mark cannot prove use of the mark prior to the filing of the expungement petition, the goods or services at issue will be canceled.

From a brand owner’s perspective, the implications of this proceeding are twofold. First, it provides a cheaper, more efficient offensive tool for brand owners to hurdle unused marks preventing them from securing their own trademark rights, or to preemptively take down potentially problematic competing marks. The proceedings avoid the expense and stress of trials, are limited to a single factual issue, and the “reasonable investigations” of non-use are guided by a list of non-exhaustive sources provided for petitioners in 37 C.F.R. §2.91(d)(2). The only risk: any relevant use of the mark prior to the filing of the petition can overcome the challenge; a registrant need not prove continued use to prevent cancellation.

Second, expungement underscores the importance of maintaining accurate and up-to-date trademark registrations. Trademark owners should periodically review their registrations to ensure that all goods and services listed are indeed being used in commerce or risk a challenge to their marks.

Finally, it is important to note that a petition for expungement may only be filed between three and ten years after the registration of the mark. This window allows new trademark registrants to grow into each of their identified goods and/or services without fear of immediate challenge upon registration.

In summary, expungement offers a proactive means of improving access to trademark protection by providing a practical avenue to challenge obsolete registrations and make space for new brands while emphasizing the need for vigilance regarding use in commerce. If you suspect that a federally registered trademark that is concerning to you or your business has never been used by the mark owner, or if you need to update the listed goods or services of your trademark to avoid an expungement, don’t hesitate to give us a call.