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.