§1066a Ex Parte Expungement

Summary

Anyone can ask the trademark office to remove one or more goods or services from a trademark registration if the mark was never used for those goods or services. The request must name the registration, list the goods or services claimed unused, include a sworn statement describing the reasonable steps taken to check use and any supporting facts, attach evidence, and include the required fee. The Director will check each listed good or service and decide if the request shows a basic case that the mark was never used. If so, the Director will start an ex parte expungement and notify the registrant and petitioner, sending copies of the papers. The Director will make rules about what counts as a reasonable investigation and what evidence can help, but the Director’s decision to start a proceeding is final. The proceeding follows rules like trademark examination, with special timing and limits. The registrant may submit evidence of use (not limited to traditional specimens). For marks registered under section 1126(e) or with certain extensions under section 1141f, the registrant can show special reasons that excuse nonuse. If the mark is found never used for particular goods or services and no excuse applies, the examiner will cancel those goods or services. The Director can also start an expungement on the Director’s own initiative. Petitions or Director-initiated actions may be made any time after 3 years and before 10 years from the date of registration; there is a related temporary rule covering the 3 years after December 27, 2020. While an expungement is pending, no later expungement may be started for the same goods or services, and goods or services found to have been used in a prior expungement cannot be challenged again. This does not change the use-in-commerce requirement for marks registered under sections 1051(a) or 1091.