New York Trademark Attorney Blog
The Trademark Modernization Act of 2020 provided for two new ex parte proceedings for non-use trademark challenges, Expungement and Reexamination. Prior to the new proceedings, if a trademark applicant encountered a trademark registration that blocked its application from registering at the Trademark Office, the only option was to initiate an expensive Cancellation Proceeding at the Trademark Trial and Appeal Board (“TTAB or Board”). For information on how these two proceedings work, see the firm’s webpage entitled, New USPTO Proceedings: Expungement & Reexamination. Also review, the Examination Guide1-21, Expungement and Reexamination Proceedings under the Trademark Modernization Act of 2020.
A few years later, the Board issued its first precedential expungement decision in In Re Locus Link USA, 2024 USPQ2d 1181 (TTAB 2024). Here, the Board affirmed the USPTO Director’s decision to cancel two registrations for SMARTLOCK for “components for air conditioning and cooling systems, namely evaporative air coolers”. The matter was initiated by a third party who filed a Petition for Expungement against the Registrant alleging non-use of the trademark SMARTLOCK for specified goods.
A Petition for Expungement must allege that the mark “has never been used in commerce on or in connection with some or all of the goods and/or services recited in the registration.” 37 C.F.R. §2.91(a)(1). A complete Petition must include: (1) a filing fee of $400 per class; (2) the trademark registration number(s) subject to the Petition: (3) the basis for the Petition under 37 C.F.R. §2.91(a); (4) the required information for Petitioner; (5) identification of each good or service subject to the Petition; (6) the elements of the reasonable investigation of non-use as defined under 37 C.F.R. §2.91(d), it must include a description of how and when the searches were conducted and what the searches disclosed; (7) a factual statement that supports the allegations of non-use as specified in paragraph 37 C.F.R. §2.91(a); and (8) a clear and legible copy of all documentary evidence supporting a prima facie case of non-use of the mark in commerce and an itemized Index of Evidence.
In this case, the USPTO Director found sufficient evidence of non-use and proposed cancellation. In addition, to this case being informative of how expungement proceedings will work at the USPTO, it also taught lessons for identification interpretation. This case turned on the id in the registration for the goods. The Registrant argued it used the mark on components for evaporative air coolers. However, the Board held that components for evaporative air coolers were not included in the trademark registration. The Board stated that the mark had to be in use in commerce for evaporative air coolers. The Registrant admitted that it did not use its SMARTLOCK mark for the fully manufactured evaporative air coolers only on components of same. Even though the identification specified, “components for air conditioning and cooling systems, namely evaporative air coolers”, the only goods covered were “evaporative air coolers” and not components for evaporative air coolers. The Board stated that without the term, “namely” and the information following the term “namely”, the identification would have been improper due to vagueness and indefiniteness. Essentially, the Board interpreted the description of goods as covering only the goods following the term, “namely”.
Registrant further argued that since the Examining Attorney accepted its prior submitted specimen, the Board was held to accept the prior decision of the Examining Attorney. The Board rejected this argument stating that neither the Director nor the Board are bound by prior decisions of an Examining Attorney in a subject application that matured into a registration, and the Examining Attorney’s acceptance of Applicant’s identification and supporting specimens does not preclude evaluation of Applicant’s use in the expungement proceeding. The decision to cancel the two registrations was affirmed.
In the end, this case is a good example of how an expungement proceeded can provide a time efficient and less expensive option for a third party to challenge non-use of a registered mark, and ultimately have the registration canceled for some or all of the goods (or services). Secondarily, this case reminds all applicants and counsel that extreme care must be given to identifying your goods and services, and your goods and services will be restricted to whatever language follows the term, “namely”. If you have questions, concerning your trademark or your trademark application, do not hesitate to contact the firm for a courtesy consultation.