Trademark Expungement and Reexamination: A Powerful Tool for E-commerce Sellers
By: AMZ Sellers Attorney®
Published: January 10, 2025
In the competitive world of e-commerce, trademarks are essential for protecting your brand and establishing a strong presence in the marketplace. However, registering a trademark can be challenging, especially when facing obstacles such as pre-existing registrations that block your application. Fortunately, the United States Patent and Trademark Office (USPTO) offers two powerful tools to address this issue: trademark expungement and reexamination. This article explores how these proceedings can help e-commerce sellers overcome obstacles in registering their trademarks and protect their brands.
What are Trademark Expungement and Reexamination?
Trademark expungement and reexamination are legal procedures that allow anyone to challenge the validity of a registered trademark based on nonuse. In essence, if a trademark owner has not used their mark in commerce for the goods or services listed in their registration, their registration may be vulnerable to cancellation through these proceedings.
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Expungement
Expungement proceedings focus on challenging the registration of a trademark for goods or services that were not in use in commerce at the time the application was filed or within a specific period after registration. If successful, the expungement proceeding will result in the removal of the unused goods or services from the trademark registration.
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Reexamination
Reexamination proceedings, on the other hand, focus on challenging the registration of a trademark for goods or services that were not in use in commerce before the relevant registration date. Similar to expungement, a successful reexamination proceeding will lead to the removal of the unused goods or services from the trademark registration.
Why are Expungement and Reexamination Important for E-commerce Sellers?
E-commerce sellers often encounter challenges when registering their trademarks due to existing registrations that block their applications. These blocking registrations may cover goods or services that are similar to yours, even if those goods or services are not actively being used by the registrant. This can be particularly frustrating when you've invested significant time and effort in developing your brand and trademark.
Expungement and reexamination proceedings provide a valuable tool for e-commerce sellers to overcome these obstacles. By challenging unused trademark registrations, you can clear the path for your own trademark application and secure your brand's protection in the marketplace.
For example, if your trademark application is refused due to a likelihood of confusion with a prior registered mark, and you believe that the prior mark is not in use, you can initiate expungement or reexamination proceedings to challenge the prior registration. If successful, this can remove the roadblock and allow your trademark application to proceed to registration.
How to Petition for Expungement or Reexamination
Anyone can petition the USPTO to initiate expungement or reexamination proceedings. The process involves several key steps:
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File a Petition
You must file a petition with the USPTO, clearly identifying the registered trademark you are challenging and the specific goods or services for which you believe there is nonuse. The petition must be filed electronically through the Trademark Electronic Application System (TEAS).
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Collect Robust Evidence
You need to gather and submit robust evidence supporting your claim of nonuse. This evidence may include market research data, website screenshots, and sworn declarations. The evidence must be clear and convincing to demonstrate that the trademark owner has not used the mark in commerce for the specified goods or services.
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Pay the Petition Fee
There is a petition fee associated with filing for expungement or reexamination. The fee amount is subject to change, so it's important to check the USPTO website for the current fee schedule.
Once the petition is submitted, the USPTO will review it for completeness and sufficiency of evidence. If the petition meets the requirements, the USPTO will institute the proceeding and notify the trademark owner. The trademark owner then has an opportunity to respond to the petition and provide evidence of use. If the USPTO determines that the evidence establishes nonuse, the registration will be canceled or amended to remove the unused goods or services.
Information about expungement and reexamination proceedings is publicly available in the Trademark Decisions and Proceedings system. You can search for information on specific cases or browse decisions and orders issued by the TTAB.
Benefits of Clearing Unused Goods and Services
Clearing unused goods and services from the trademark register offers several benefits:
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Unblocks Trademark Applications
Removing unused trademarks can pave the way for your trademark application to proceed to registration without facing a likelihood of confusion refusal.
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Strengthens Your Trademark Rights
Clearing potentially conflicting marks can strengthen your trademark rights and reduce the risk of future infringement claims.
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Promotes Fair Competition
Removing unused trademarks helps ensure that the trademark register accurately reflects the marks that are actively being used in commerce, promoting fair competition in the marketplace.
How AMZ Sellers Attorney® Can Help
Navigating the complexities of expungement and reexamination proceedings can be challenging. AMZ Sellers Attorney® provides expert legal guidance and representation to help you:
- Assess the viability of your expungement or reexamination case.
- Gather and prepare robust evidence of nonuse.
- Draft and file your petition with the USPTO.
- Represent you throughout the proceedings.
Don't let unused trademarks hinder your brand's growth. Contact AMZ Sellers Attorney® today to discuss your case and explore how expungement or reexamination proceedings can benefit your business.
For more information on trademark registration and expungement/reexamination proceedings, please visit our Trademark Registration page.
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