“Reasonable Investigation” Practice Tips for Trademark Expungement and Reexamination Proceedings

As the 1.5 year anniversary of the Trademark Modernization Act’s implementation approaches in June, the United States Patent and Trademark Office now offers an array of helpful guidance on the requirements, format, and even practice tips for ex parte expungement and reexamination proceedings – in particular, the “reasonable investigation” requirement for both petitions. To add further insight and visibility into these relatively new proceedings, the USPTO’s Trademark Decisions and Proceedings portal also offers a customizable search tool categorizing the petitions that the Office is receiving – and granting – on these two grounds.

As discussed in our December 2021 article, the TMA created these proceedings to help trademark owners and practitioners clear unused (and even fraudulent) trademark registrations from the federal trademark Register. To briefly summarize the difference between the two, expungement petitions seek to cancel a federal registration when you believe the registered mark has never been used in commerce with some or all of the covered goods/services. Until December 27, 2023, an expungement petition can be filed against any registration that is at least three years old; after that date, the proceeding is only available against registrations between three and ten years old.

In contrast, reexamination petitions seek to cancel all or part of federal registrations for which the mark was not in use at the application filing date (for a use-based application) or the Amendment to Allege Use filing date/Statement of Use expiration date (for an intent-to-use application). A reexamination petition may only be filed within the first five years after registration.

Both types of petitions must include all of the following requirements:

1. A verified statement that the petitioner conducted a “reasonable investigation” into whether the trademark had been used in commerce with the applicable goods/services, including a concise factual statement detailing the basis for the petition;
2. Evidence supporting a prima facie case of nonuse in commerce (“a reasonable predicate”); and
3. A fee of $400 per challenged Class of goods/services.

Now that these petitions have been available for nearly a year and a half, potential petitioners can access a fairly robust body of guidance into what the USPTO is seeking to satisfy that first requirement of a “reasonable investigation” into potential non-use. A few key practice tips include:

• Screenshot everything: Petitions should include documentation (ideally, screenshots) showing that the challenged trademark did not show up in the conducted searches. The USPTO provides the example that “[i]f you searched Walmart, Target, or Amazon websites for use of a particular trademark and zero search results were returned, provide a screenshot of the webpage showing negative search results.” Search strategies should also be documented and detailed, particularly to include the relevant date range(s) searched and the resulting hits.
• Use the Wayback Machine: The USPTO also recommends including screenshots from Archive.org (Wayback Machine) to show that the challenged mark was not in use as of the relevant date or at all – for example, screenshots of Wayback Machine search results from the Registrant’s website showing no hits from an internal search for the mark at issue. As noted in the USPTO’s guidance, Wayback Machine evidence does not have to be certified but it does need to include (a) the date range searched and (b) the date the Wayback Machine was accessed.
• Include multiple sources: Avoid relying on just one large online retailer named after a famous river, and make sure to include multiple sources to show non-use. To expand your search strategy in this area, consider specialty retailers who may feature the challenged product or service type – such as department stores for clothing-related marks, online pharmacies for pharmaceutical goods, or reservations platforms for restaurant services. As advised above, the USPTO also recommends including several different online e-commerce websites, such as Target, Walmart, and Amazon.
• Social media results: For company name marks in particular, consider including social media results – such as searches of Facebook, Instagram, Twitter, and/or LinkedIn showing no results for the mark at issue, given that many companies usually maintain a page on at least one of these platforms.
• Reverse image search for design marks: For design-only or design-inclusive registrations, the USPTO will almost certainly require proof that a reverse image search was conducted on Google, TinEye, or a similar platform(s).
• Regulatory documents: If the mark at issue pertains to a regulated industry, the USPTO recommends searching for evidence from regulatory bodies/agencies with which such business types would be required to register or file documents; their absence could be a valuable data point towards a persuasive non-use argument.
• (Last but not least… ) Hire an experienced trademark lawyer: Both potential petitioners who may wish to request expungement or reexamination and registrants seeking to defend against such a proceeding should strongly consider hiring a trademark attorney/firm to investigate the potential claims of nonuse, build the necessary record of evidence, and prepare the requisite pleading(s).

And although the practice tips above pertain to brand owners seeking to challenge unused and perhaps even fraudulent registrations, it is also very worth bearing in mind that brand owners must also be prepared to respond to a potential non-use action filing against one of its registered marks.

As always, we recommend that brand owners take care to maintain: (1) examples of use of marks on all relevant goods/services covered by your registrations, including different photographs, brochures, and relevant materials showing use for the same goods/services; (2) documentation, photographs, and screenshots of updated uses (e.g., an updated website); and (3) information regarding the discontinuation of use on particular goods/services – which is particularly critical at the time of filing a Declaration of Continued Use on its own or with a Renewal Application.

This article appeared in the April 2023 issue of MarkIt to Market®. To view our past issues, as well as other firm newsletters, please click here.