Summary. The Trademark Modernization Act of 2020 gave businesses blocked by phantom registrations cheaper tools than a full cancellation case, and gave registrants new ways to lose registrations they never earned. This article explains how ex parte expungement (marks never used) and ex parte reexamination (marks not in use on the date use was claimed) work under 15 U.S.C. §§ 1066a and 1066b and 37 C.F.R. §§ 2.91 to 2.94, including the reasonable-investigation requirement, the filing windows, the Director's non-reviewable institution decision, the registrant's response options, estoppel, and appeals to the TTAB and the Federal Circuit. It walks through the TTAB's leading decisions under the new procedures, the new Section 14(6) nonuse cancellation ground, and how each tool compares with abandonment and fraud claims after In re Bose. It also covers letters of protest, shortened office-action response periods, the post-registration audit program, and the restored presumption of irreparable harm in 15 U.S.C. § 1116(a). A worked example follows a startup whose application is blocked by a 2016 registration supported by a doctored specimen, and the article closes with strategy for both sides, common mistakes, an FAQ, and practical takeaways.

On the last day it could file a statement of use, a credit union that was planning to rebrand added a one-line tagline with its new name to a single page of its website, took a screenshot, and filed the screenshot with the USPTO as proof that it was using the new name. The examining attorney accepted it and the registration issued. Seven weeks later a stranger filed a petition, armed with archived copies of the website and the credit union's own app-store listings, and in April 2026 the Trademark Trial and Appeal Board affirmed cancellation of the registration in its entirety. No lawsuit, no discovery, no opposing party in the room: just a petition, a USPTO examiner, and a registrant that could not show it had really been using the mark on the day it said it was.

That is the Trademark Modernization Act of 2020 at work. For decades the federal register filled up with registrations for marks that were never used, or not used when the owner swore they were, and the only way to clear one was to litigate it out of existence. The Act gave the public cheaper tools, gave the USPTO new powers, and gave brand owners a new set of risks to manage.

The short answer

The Trademark Modernization Act (TMA) created two new ex parte proceedings, meaning proceedings run by the USPTO against a registration without an adversary on the other side:

  • Ex parte expungement (15 U.S.C. § 1066a) cancels a registration, in whole or in part, for goods or services on which the mark has never been used in commerce. A petition may be filed between the third and tenth anniversaries of registration. For three years after enactment, through December 27, 2023, it could also be filed against older registrations.
  • Ex parte reexamination (15 U.S.C. § 1066b) cancels a use-based registration, in whole or in part, for goods or services on which the mark was not in use on the relevant date: the filing date of a use-based application, or the date use was alleged in an intent-to-use application. A petition may be filed any time within five years after registration.

Anyone may file either petition. The petitioner must describe a "reasonable investigation," support it with a verified statement and indexed evidence, and pay a per-class fee ($400 per class when the procedure launched). If the Director finds a prima facie case of nonuse, the USPTO institutes a proceeding, the petitioner drops out, and the registrant must prove use with real evidence or lose the challenged goods. The Director may also start proceedings on the Office's own initiative. The decision to institute (or not) is final and unreviewable. A registrant who loses may appeal to the TTAB and then to the Federal Circuit; a petitioner who loses has no appeal but keeps every other remedy, including an ordinary cancellation case.

The Act did several other things that matter in practice. It codified letters of protest, which let third parties put evidence in front of an examining attorney before a bad application registers (15 U.S.C. § 1051(f)). It added a new "never used" ground to TTAB cancellation in 15 U.S.C. § 1064(6) with no ten-year cutoff. It authorized shorter office-action response periods. It restored a rebuttable presumption of irreparable harm for trademark plaintiffs who show likely success on the merits (15 U.S.C. § 1116(a)). Alongside the Act, the USPTO's post-registration audit program keeps testing whether owners who swear to use in maintenance filings can back it up.

For a business blocked by a phantom registration, the practical message is that a well-documented petition costing a few thousand dollars can now do what used to take a contested TTAB case. For a registrant, the message is that every claim of use is now a claim someone may test, years later, with the Wayback Machine.

Why Congress acted, and what the Act changed

A register full of deadwood

A federal registration is supposed to mean something. It gives nationwide constructive notice of the owner's claim (15 U.S.C. § 1072), it is evidence of validity and of the exclusive right to use the mark (15 U.S.C. § 1115), and, most immediately for everyone else, it blocks later applications under Section 2(d) (15 U.S.C. § 1052). A registration for a mark nobody uses blocks real businesses just as effectively as a registration for a famous brand. Commentators call this the scarecrow effect: the registration deters others from adopting a name even though nothing stands behind it.

By the late 2010s the USPTO had hard data that the register was cluttered. In a post-registration audit pilot, owners of 45% of audited Section 1(a) registrations could not verify use they had previously claimed, and the figures for registrations based on foreign registrations under Section 44(e) and on Madrid Protocol extensions under Section 66(a) were 65% and 71%. Scott D. Locke, A Proposal to Declutter the Trademark Register of Improperly Obtained and Maintained Section 44 and Section 66 Registrations, 48 AIPLA Q.J. 403, 421 (2020). After the program became permanent, then-Commissioner for Trademarks Mary Boney Denison reported that more than half of audited owners deleted goods or services they had recently sworn were in use, and that almost 80% of the owners deleting goods were represented by counsel. Practical Law, Expert Q&A: Trademark Commissioner Discusses Changes at the USPTO (Aug. 15, 2019).

The specimen fraud problem

A second problem was manufactured evidence. A specimen is the real-world example (a label, a product photo, a webpage with a shopping cart) that shows how a mark is used on the goods or services. In the late 2010s the USPTO saw a surge of applications supported by digitally created or altered specimens: stock photos with a logo pasted on, mockups of products that did not exist, and the same image reused across unrelated applications. At a December 3, 2019 Senate Judiciary subcommittee hearing, evidence was presented that nearly two-thirds of use-based applications originating from China in International Class 25 (clothing) included fraudulent specimens, and that 40% of those applications had registered. Locke, 48 AIPLA Q.J. at 408-09. Professors Barton Beebe and Jeanne Fromer documented the same pattern in an empirical study, Fake Trademark Specimens: An Empirical Analysis, 120 Colum. L. Rev. Forum 217 (2020). The USPTO now trains examiners to spot altered specimens and treats them as grounds for refusal; see TMEP § 904.04(a).

The Office's first structural response was the U.S.-counsel rule: since August 3, 2019, applicants, registrants, and parties domiciled outside the United States must be represented by a U.S.-licensed attorney. Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants, 84 Fed. Reg. 31,498 (July 2, 2019); 37 C.F.R. § 2.11. The rule puts a member of a U.S. bar, subject to the USPTO's disciplinary rules in 37 C.F.R. Part 11, behind every foreign filing. It did not remove the registrations that had already issued.

Why cancellation was not enough

Before the TMA, a business blocked by deadwood had to petition the TTAB to cancel it under 15 U.S.C. § 1064. That works, but it has friction. The petitioner must plead and prove an entitlement to a statutory cause of action, which the Federal Circuit now tests under the zone-of-interests and proximate-cause framework of Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014); see Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020). It must pay a filing fee, litigate against a registrant that is often abroad, and, if the registrant answers, wait out discovery and trial periods that commonly run well over a year. Timing was the bigger obstacle. A claim that a registration was void from the start because the mark was not in use when the application was filed is available only during the first five years; after that, Section 14 bars it. NetJets Inc. v. IntelliJet Group, LLC, 678 F. App'x 343 (6th Cir. 2017). Once a never-used registration passed its fifth anniversary, the challenger was left with abandonment (which requires proving the owner's intent) or fraud (which requires proving a knowing, deliberate lie, as discussed below).

What the Act changed

The TMA was enacted on December 27, 2020, as part of the Consolidated Appropriations Act, 2021, Pub. L. No. 116-260, div. Q, tit. II, subtit. B, §§ 221-228. The USPTO's implementing rules took effect on December 18, 2021. Changes To Implement Provisions of the Trademark Modernization Act of 2020, 86 Fed. Reg. 64,300 (Nov. 17, 2021). The pieces fit together like this:

TMA change What it does Where it lives
Ex parte expungement Cancels goods or services on which the mark was never used 15 U.S.C. § 1066a; 37 C.F.R. §§ 2.91-2.94
Ex parte reexamination Cancels goods or services on which the mark was not in use on the relevant date 15 U.S.C. § 1066b; 37 C.F.R. §§ 2.91-2.94
New "never used" cancellation ground TTAB or court cancellation at any time after three years from registration 15 U.S.C. § 1064(6)
Letters of protest codified Third-party evidence submitted to the examiner; two-month decision; non-reviewable 15 U.S.C. § 1051(f); 37 C.F.R. § 2.149
Flexible response periods Allows office-action deadlines as short as 60 days, with extensions 15 U.S.C. § 1062(b); 37 C.F.R. § 2.62
Appeals for TMA registrants TTAB, then the Federal Circuit only; no civil action 15 U.S.C. § 1070; 15 U.S.C. § 1071
Director review of the Board Director may reconsider, modify, or set aside TTAB decisions 15 U.S.C. § 1070
Supplemental Register Supplemental registrations are subject to both new proceedings 15 U.S.C. § 1094
Presumption of irreparable harm Rebuttable presumption on a showing of likely success or a finding of violation 15 U.S.C. § 1116(a)

Two points deserve emphasis before the details. First, the new proceedings are deliberately narrow. They answer one question (was the mark used on these goods, at the relevant time?) and nothing else: not likelihood of confusion, not priority, not fraud. Second, the expungement statute runs "notwithstanding" the statutory presumptions that normally protect a registrant: Section 1066a(a) overrides 15 U.S.C. § 1057(b), § 1072, and § 1115(a) and (b), which is why an incontestable registration under 15 U.S.C. § 1065 offers no shield against expungement. Incontestability protects a registration from many challenges; it was never meant to protect a registration for a mark that was never used at all.

Expungement and reexamination: who can be challenged, for what, and when

Expungement asks whether the mark was ever used

An expungement petition alleges that the registered mark "has never been used in commerce on or in connection with some or all of the goods or services recited in the registration." 15 U.S.C. § 1066a(a). It reaches registrations issued on any filing basis: use-based and intent-to-use registrations under Section 1, registrations based on a foreign registration under Section 44, and Madrid Protocol extensions under Section 66 (37 C.F.R. § 2.91(a)(1)). It also reaches the Supplemental Register (15 U.S.C. § 1094) and collective and certification marks (37 C.F.R. § 2.92(g)).

The filing window opens on the third anniversary of registration and, for petitions filed after December 27, 2023, closes on the tenth. 15 U.S.C. § 1066a(i); 37 C.F.R. § 2.91(b)(1). The three-year delay gives Section 44 and Section 66 registrants, who can register without ever using the mark in the United States, a period to begin use. After the tenth anniversary, a never-used registration can still be challenged, but only at the TTAB or in court under Section 14(6). For the first three years after enactment, Congress opened the door wider: any registration at least three years old could be challenged, however old it was, and that transition window closed on December 27, 2023.

"Use in commerce" carries its usual statutory meaning: "the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark." 15 U.S.C. § 1127. For goods, the mark must appear on the goods, their containers, tags, labels, or point-of-sale displays, and the goods must be sold or transported in commerce. For services, the mark must be used in selling or advertising the services and the services must actually be rendered. "Commerce" reaches as far as Congress's commerce power, so the bar is low: two hats sold to an out-of-state customer was enough in Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986 (Fed. Cir. 2016), and a single restaurant serving interstate travelers was in commerce in Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 929 F.2d 662 (Fed. Cir. 1991). Expungement is for registrations that cannot clear even that bar.

The statute builds in a generous defense. A mark "shall not be found to have never been used in commerce if there is evidence of use in commerce by the registrant that temporally would have supported registration at the time the application was filed or the relevant allegation of use was made, or after registration, but before the petition to expunge was filed." 15 U.S.C. § 1066a(g). Any qualifying use at any time before the petition (or before a Director-initiated proceeding) defeats expungement for those goods, even use that began after registration. That is why expungement is the natural tool against the Section 44 or Section 66 registrant who registered on a foreign basis and simply never entered the U.S. market.

Those registrants get one extra defense. A registrant whose goods rest solely on Section 44(e) or Section 66(a) may show that "nonuse is due to special circumstances that excuse such nonuse." 15 U.S.C. § 1066a(f); 37 C.F.R. § 2.93(b)(5)(ii). Excusable nonuse is not available to anyone else (86 Fed. Reg. at 64,314). The concept is borrowed from Section 8 practice (TMEP § 1604.11) and from abandonment law, and the case law is unforgiving about business choices dressed up as special circumstances. In Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575 (Fed. Cir. 1990), a Section 44 registrant that chose not to launch its JPS cigarettes in the United States for business reasons could not avoid cancellation, and in Rivard v. Linville, 133 F.3d 1446 (Fed. Cir. 1998), a Canadian salon owner who never opened a U.S. salon under ULTRACUTS needed evidence of the steps "a reasonable businessman" with a bona fide intent to use the mark would take, not testimony that he never meant to give it up. Trade embargoes, regulatory approval delays, and similar obstacles outside the owner's control are the classic examples of genuine special circumstances.

Reexamination asks whether the mark was in use when the registrant said it was

A reexamination petition alleges that the mark "was not in use in commerce on or in connection with some or all of the goods or services recited in the registration on or before the relevant date." 15 U.S.C. § 1066b(a). It reaches only registrations issued under Section 1, because only Section 1 required proof of use before registration (37 C.F.R. § 2.91(a)(2)). The petition must be filed within five years after registration. 15 U.S.C. § 1066b(i); 37 C.F.R. § 2.91(b)(2).

The "relevant date" depends on the filing basis (15 U.S.C. § 1066b(b); 37 C.F.R. § 2.91(a)(2)):

  • Use-based application (Section 1(a)), never amended to intent-to-use: the application filing date. The first-use dates in the application do not matter.
  • Intent-to-use application (Section 1(b)), or one amended to 1(b): the date an amendment to allege use was filed or, for goods covered by a statement of use, the expiration of the statement-of-use deadline, including all approved extensions.

That second rule has a practical consequence that surprises people. The question for an intent-to-use registration is not whether the mark was in use on the day the statement of use was filed, but whether it was in use by the deadline. A registrant that filed its statement of use a month early but began genuine sales a week before the deadline survives reexamination. A registrant that was not using the mark by the deadline cannot be saved by later use, however genuine. That was the credit union's problem in In re Everwise Credit Union, Reexamination No. 2023-100533R (T.T.A.B. Apr. 29, 2026) (precedential): its real rebrand launched on June 26, 2023, about ten weeks after its April 14 deadline, and the Board observed that an applicant facing a non-extendable deadline without use should file a new intent-to-use application rather than an invalid statement of use.

Reexamination is the sharper tool against registrations obtained with fake specimens. The petitioner does not have to prove that the mark was never used, only that it was not in use on one date, and the specimen the registrant filed on that date is often the best evidence that it was not.

Side by side

Expungement Reexamination
Core allegation Never used on the listed goods or services Not in use on the relevant date
Registrations covered Sections 1, 44, and 66; Supplemental Register Section 1 only; Supplemental Register
Filing window Years 3 through 10 after registration (older registrations only until Dec. 27, 2023) Within 5 years after registration
Use that defeats it Any qualifying use before the petition or Director institution Use on or before the relevant date
Excusable nonuse Available for goods based solely on Section 44(e) or 66(a) Not available
Effect of a registrant win No further expungement for those goods No further expungement or reexamination for those goods

The petition: reasonable investigation and the prima facie case

Who may file, and what it costs

"Any person" may file. Unlike an opposition or cancellation, there is no requirement to show a commercial injury or any other entitlement to a cause of action, a real advantage after the Federal Circuit applied the Lexmark framework to keep a consumer from opposing a registration in Curtin v. United Trademark Holdings, Inc., 137 F.4th 1359 (Fed. Cir. 2025). The real party in interest may file through someone else if it fears retaliation (86 Fed. Reg. at 64,308), although the Director may require that the real party be identified (37 C.F.R. § 2.91(h)). A petitioner domiciled outside the United States must designate a U.S. attorney (37 C.F.R. § 2.91(c)(5)). The fee is charged per class challenged under 37 C.F.R. § 2.6(a)(26); it was $400 per class at launch, and the fee schedule should be checked before filing because the USPTO revised its trademark fees in January 2025.

What a complete petition contains

The petition is filed electronically through TEAS, and only a complete petition will be considered; once complete, it cannot be amended (37 C.F.R. § 2.91(c)). It must include:

  1. the fee and the registration number;
  2. the basis (expungement or reexamination);
  3. the petitioner's name, domicile address, and email address, plus attorney information where required;
  4. each good or service challenged, copied from the registration;
  5. a verified statement, signed by someone with firsthand knowledge, setting out in numbered paragraphs the elements of the reasonable investigation (for each source, how and when it was searched and what the search disclosed) and a concise statement of any other facts supporting nonuse; and
  6. clear copies of all supporting evidence, with an itemized index tying each item to the goods it supports.

The rule lists the kinds of evidence that support a prima facie case: verified statements, excerpts from USPTO records, webpage screenshots showing the URL and the access or print date, articles and press releases identified by publication and date, and evidence that the verification of an allegation of use was improperly signed (37 C.F.R. § 2.91(c)(9)).

What counts as a reasonable investigation

The petitioner must make "a bona fide attempt to determine if the registered mark was not in use in commerce or never in use in commerce" by conducting a reasonable investigation, which the rule defines as "an appropriately comprehensive search, which may vary depending on the circumstances but is calculated to return information about the underlying inquiry from reasonably accessible sources where evidence concerning use of the mark during the relevant time period on or in connection with the relevant goods and/or services would normally be found." 37 C.F.R. § 2.91(d)(1). The suggested sources are state and federal trademark records; the registrant's own websites and social media; websites, marketplaces, and publications where the goods would be advertised or sold; reviews and discussions of the goods; state and federal business and regulatory filings; the registrant's marketplace activity, including attempts to contact the registrant or buy the goods; litigation and administrative records; and any other reasonably accessible source (37 C.F.R. § 2.91(d)(2)). The petitioner "need not check all possible appropriate sources" (37 C.F.R. § 2.91(d)(3)), but examiners often decline petitions built on thin, incomplete internet searches.

Three lessons from the USPTO's commentary and early practice shape a good investigation. First, the question is historical, so the search must be pointed at the relevant period, and the USPTO expressly contemplates archival evidence (86 Fed. Reg. at 64,302); in practice, archived pages from the Internet Archive's Wayback Machine are the workhorse. Evidence that a mark is not in use today supports an inference about the past but does not by itself prove past nonuse. Second, a search of USPTO databases for "evidence of use" proves nothing, because those databases record applications and registrations, not marketplace use; the Board said exactly that in Everwise. A review of the registrant's own file, by contrast, is valuable: specimens that turn out to be stock photos, other applications refused for bad specimens, and other registrations already cancelled in TMA proceedings. Third, quality beats quantity. The USPTO asks for evidence that directly supports nonuse, legible full screenshots with URLs visible, and no data dumps.

A petitioner may hire an investigator to make test purchases or ethically permissible inquiries, and the petition may describe the results generally without waiving privilege (86 Fed. Reg. at 64,303). The petition and its evidence become part of the public registration record and are made available to the registrant whether or not a proceeding is instituted (37 C.F.R. § 2.92(f)), so anything in it should be something the petitioner is content for the registrant, and the world, to read.

The ethics of filing

A petition is a paper filed with the USPTO, so whoever signs it certifies under 37 C.F.R. § 11.18 that it is not presented for an improper purpose and that its factual contentions have evidentiary support, and the verified statement is made under penalty of 18 U.S.C. § 1001. Because the proceeding is ex parte, a practitioner must also disclose material facts known to the practitioner, including adverse ones (37 C.F.R. § 11.303(d)). If the investigation turns up evidence that the mark was used on some of the goods, the petition should drop those goods. A petition that hides contrary evidence is not just bad strategy; it invites discipline.

The prima facie case

The Director institutes a proceeding for each good or service for which the petition "sets forth a prima facie case" of nonuse (15 U.S.C. § 1066a(c); 15 U.S.C. § 1066b(d); 37 C.F.R. § 2.92(a)). The House Report describes the standard as a "reasonable predicate" of nonuse, H.R. Rep. No. 116-645, at 8 (2020), and the USPTO adds that the petition must give the registrant enough notice of the allegations to respond (86 Fed. Reg. at 64,303). In practice this is a real but modest threshold: a coherent, dated investigation across the places where the goods would normally appear, documented with exhibits a reader can follow.

Inside the proceeding: institution, response, decision, and appeal

Institution

The Director decides, good by good, whether the petition makes out a prima facie case, and may institute on fewer goods than the petition lists or, on the Director's own initiative, on more (37 C.F.R. § 2.92(c)(2)). The Director may also start a proceeding with no petition at all, "if the Director discovers information that supports a prima facie case," and must then give the registrant the information that formed the basis for the decision (15 U.S.C. § 1066a(h); 15 U.S.C. § 1066b(h); 37 C.F.R. § 2.92(b)). Multiple petitions against one registration may be consolidated (37 C.F.R. § 2.92(e)). In practice the work is done by examiners acting under authority the Director delegates (35 U.S.C. § 3; 37 C.F.R. § 2.91(e)), and the TTAB's decisions identify the Office's Director for Trademark Register Protection on the government's side.

The institution decision "shall be final and non-reviewable." 15 U.S.C. § 1066a(c)(3); 15 U.S.C. § 1066b(d)(3); 37 C.F.R. § 2.92(c)(1). A registrant cannot appeal institution, and a petitioner cannot appeal a refusal to institute. The same sentence adds that the decision "shall not prejudice any party's right to raise any issue and rely on any evidence in any other proceeding," apart from the estoppel rules discussed below. Once a proceeding is instituted, the petitioner's role is over. The statute directs that the procedures be "the same as the procedures for examination" of applications, which is to say ex parte, between the registrant and the Office alone (15 U.S.C. § 1066a(d)).

The registrant's response

Institution arrives as an office action that requires the registrant to produce "such evidence of use, information, exhibits, affidavits, or declarations as may be reasonably necessary to rebut the prima facie case of nonuse" (37 C.F.R. § 2.93(a)). The registrant has three months from the issue date to respond, extendable once by one month on a timely request and fee. Miss the deadline and the proceeding ends with cancellation of the challenged goods (37 C.F.R. § 2.93(b)(1)). A registrant whose response is a bona fide, substantially complete attempt but omits something may get the longer of 30 days or the rest of the response period to fix it (37 C.F.R. § 2.93(b)(2)); in Everwise, the cure was adding URLs and access dates to web printouts.

An acceptable response consists of one or more of the following (37 C.F.R. § 2.93(b)(5)-(6)):

  • Evidence of use on or before the date that matters: before the petition (expungement) or on or before the relevant date (reexamination).
  • Excusable nonuse, in expungement only, for goods resting solely on Section 44(e) or 66(a).
  • Deletion of some or all challenged goods.

Evidence of use must be "consistent with" the statutory definition of use in commerce but "shall not be limited in form to that of specimens" (15 U.S.C. § 1066a(e); 15 U.S.C. § 1066b(f)). It must come with a verified statement from someone with firsthand knowledge, in numbered paragraphs, explaining what each exhibit is and how it shows use as of the relevant date, plus labeled exhibits and an itemized index linking each exhibit to particular goods (37 C.F.R. § 2.93(b)(7)). The USPTO has said that testimony should be backed by documents (86 Fed. Reg. at 64,304), and its examination manual warns that "merely resubmitting the same specimen of use previously submitted in support of registration or maintenance thereof, or a verified statement alone, without additional supporting evidence, will likely be insufficient." TMEP § 1716.04(c). The registration file was already considered when the proceeding was instituted; repeating it proves nothing new. The registrant may redact genuinely confidential business information and, if the examiner needs the unredacted version, may petition to submit it outside the public record (86 Fed. Reg. at 64,313).

Deletion is immediate and permanent: goods cannot be added back, and no other amendment to the identification is allowed in a response (37 C.F.R. § 2.93(d)). Deleting goods after a Section 8 or Section 71 declaration has been filed but before it is accepted triggers a per-class deletion fee. A separately filed surrender or amendment does not count as a response unless the registrant tells the examiner about it in a timely response (37 C.F.R. § 2.93(d)(2)). The office action may also enforce the domicile, electronic-filing, and U.S.-counsel requirements of 37 C.F.R. §§ 2.189, 2.23, and 2.11, which by themselves can sink a foreign registrant that never hired U.S. counsel.

Although the registrant must come forward with evidence, the USPTO has said that it bears the ultimate burden of establishing nonuse by a preponderance of the evidence (86 Fed. Reg. at 64,304). That allocation rarely matters when the registrant produces nothing; it matters a great deal when the registrant produces something ambiguous.

Decision

If the registrant rebuts the prima facie case and satisfies every requirement, the proceeding terminates and the registration is untouched (37 C.F.R. §§ 2.93(c)(3)(i), 2.94). If not, a final office action issues. The registrant then has three months to request reconsideration, appeal to the TTAB, or both; a request for reconsideration does not extend the appeal deadline (37 C.F.R. § 2.93(c)(1)-(2)). Requirements such as U.S. counsel or domicile are reviewed by petition to the Director rather than by appeal. When the time for appeal runs out, the Director cancels the registration as to each good for which nonuse was found, and only those goods (15 U.S.C. § 1066a(g); 15 U.S.C. § 1066b(g)). A registration cancelled for a missed deadline can be reinstated only on a petition to the Director showing extraordinary circumstances (37 C.F.R. § 2.146).

Appeal

The TMA amended 15 U.S.C. § 1070 to allow an appeal to the TTAB from "a final decision by an examiner in an ex parte expungement proceeding or ex parte reexamination proceeding." The notice of appeal and per-class fee are due within three months of the final action (37 C.F.R. §§ 2.141(b), 2.142(a)(2)). The appellant's brief follows within 60 days and is limited to 25 pages; the examiner files a responsive brief and the registrant may reply. The record is closed: "no additional evidence may be included once an appeal is filed, and the Board may not remand for further examination" (37 C.F.R. § 2.142(d)(2)). That is stricter than an ordinary application appeal, where the Board can suspend and remand. The TMA also confirmed the Director's power to "reconsider, and modify or set aside" a Board decision (15 U.S.C. § 1070), a provision drafted against the backdrop of the Appointments Clause litigation that the Supreme Court resolved for patent judges in United States v. Arthrex, Inc., 594 U.S. 1 (2021).

From the Board, a registrant "subject to an ex parte expungement proceeding or an ex parte reexamination proceeding" may appeal to the Federal Circuit (15 U.S.C. § 1071(a)(1); 28 U.S.C. § 1295), but cannot file a civil action in district court; § 1071(b)(1) expressly excludes these registrants. In the patent context, a district court action allows new evidence, as Kappos v. Hyatt, 566 U.S. 431 (2012) explains. A TMA registrant has no such second chance. The Federal Circuit reviews the Board's fact findings for substantial evidence under the Administrative Procedure Act, 5 U.S.C. § 706; Dickinson v. Zurko, 527 U.S. 150 (1999); On-Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080 (Fed. Cir. 2000). For a registrant, the response to the institution notice is effectively the trial.

The leading decisions, explained

The TTAB's precedential decisions under the new procedures are few, but each teaches something a practitioner can use the next morning.

In re Locus Link USA (T.T.A.B. 2024): the identification controls

Locus Link owned two registrations for SMARTLOCK, issued in January 2018 on use-based applications, for "Components for air conditioning and cooling systems, namely, evaporative air coolers" in Class 11. A third party petitioned for expungement in July 2022; the proceedings were instituted; the registrant responded with declarations and photos of what it actually sold, which were refrigerant fittings that join copper and aluminum tubing in HVAC units. The examiner issued final actions finding that the marks had never been used on the identified goods, and the Board affirmed in In re Locus Link USA, Expungement Nos. 2022-100137E & 2022-100138E (T.T.A.B. July 1, 2024) (precedential).

The registrant admitted it did not sell evaporative air coolers. Its argument was that the identification really covered components for cooling systems, of which its fittings were one. The Board disagreed. Wording after "namely" defines the indefinite wording before it, so the registrations covered evaporative air coolers that are components of cooling systems, not parts for those coolers; a component identification has to name the component and the finished product it goes into, and fittings of that kind would be classified in other classes entirely (TMEP §§ 1402.03(a), 1402.05(a)). Identifications must use common commercial names so the public knows what is covered, a point the Board took from In re Sones, 590 F.3d 1282 (Fed. Cir. 2009) and McCarthy on Trademarks and Unfair Competition § 19:48. Nor did it matter that an examining attorney had accepted the specimens years earlier; prior examination decisions do not bind the Office (In re Nett Designs, Inc., 236 F.3d 1339 (Fed. Cir. 2001)).

The lesson cuts both ways. For a petitioner, read the identification literally, word by word; the registrant's real business may not match what it registered. For a registrant, a TMA response is no place to reinterpret the identification, because only deletions are allowed.

In re Everwise Credit Union (T.T.A.B. 2026): token use and industry norms

Teachers Credit Union filed an intent-to-use application for EVERWISE CREDIT UNION in June 2019, used all five statement-of-use extensions, and on the last possible day, April 14, 2023, filed a statement of use with a screenshot of one page of its existing website. The page carried the tagline "Why TCU? Because we are an Everwise Credit Union™" and two mentions of the phrase buried in body text. The registration issued May 30, 2023. In July, a petitioner filed for reexamination with Wayback Machine captures showing no use, app-store listings under the old TCU name, and a search of Board records. The Director instituted, the credit union answered with a marketing executive's declaration and exhibits, and the examiner issued a final action finding nonuse as of the deadline. The Board affirmed in In re Everwise Credit Union, Reexamination No. 2023-100533R (T.T.A.B. Apr. 29, 2026) (precedential).

Three parts of the opinion will be quoted for years. First, the two buried mentions were not trademark use at all, because they appeared in the same font and size as the surrounding text and would not be perceived as a mark (TMEP § 1301.04(f)(i)). Second, the tagline was "use made merely to reserve a right in a mark," the exact phrase 15 U.S.C. § 1127 excludes, and the Board measured it against what genuine use looks like in the industry: a credit union really operating under a new name would have signage, checks, debit cards, brochures, and customer communications, and the registrant produced none dated before the deadline. The Board relied on the Federal Circuit's line of use cases, including Couture v. Playdom, Inc., 778 F.3d 1379 (Fed. Cir. 2015) (advertising services not yet rendered is not use), Aycock Engineering, Inc. v. Airflite, Inc., 560 F.3d 1350 (Fed. Cir. 2009) (preparations to offer a service are not use), Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376 (Fed. Cir. 2012), and M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368 (Fed. Cir. 2015), which explains that the 1988 "bona fide use" language was aimed at token and preparatory uses. Third, the executive's statement that the registrant had made "bona fide use" was a legal conclusion entitled to no weight. Declarations must state facts.

Common Sense Press Inc. v. Van Sciver (T.T.A.B. 2023): no preclusion against the petitioner

A comics publisher petitioned to cancel the COMICS GATE registration for nonuse, abandonment, and fraud, then filed a reexamination petition and had the Board case suspended while the USPTO looked at use. The Director instituted, the registrant proved use by its statement-of-use deadline, and the reexamination terminated in the registrant's favor. The registrant then asked the Board to enter judgment on the nonuse and abandonment claims on preclusion grounds. The Board refused in Common Sense Press Inc. v. Van Sciver, Cancellation No. 92075375 (T.T.A.B. May 19, 2023) (precedential). An ex parte proceeding binds no one who was not a party to it, and the petitioner, who cannot participate or appeal, is not a party. The Board relied on Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313 (1971) and Jet, Inc. v. Sewage Aeration Systems, 223 F.3d 1360 (Fed. Cir. 2000), and on the USPTO's own statement that a registrant-favorable termination "does not bar future nonuse cancellation actions" (86 Fed. Reg. at 64,306). Contrast inter partes Board decisions, which can have issue-preclusive effect in later litigation under B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138 (2015). The Board also reminded the petitioner of its obligations under Fed. R. Civ. P. 11, a quiet signal that the freedom to pursue both tracks is not a license to pursue a weak claim twice.

Estoppel, parallel proceedings, and the new Section 14(6) ground

Estoppel runs in the registrant's favor

The statute gives the registrant something for surviving. Once an expungement proceeding has determined that the registrant used the mark on particular goods, "no further ex parte expungement proceedings may be initiated as to those goods or services, regardless of the identity of the petitioner" (15 U.S.C. § 1066a(j)). The reexamination provision is parallel (15 U.S.C. § 1066b(j)), and the USPTO's rule goes one step further: a registrant who wins a reexamination is protected from later expungement as well as reexamination for those goods (37 C.F.R. § 2.92(d)(2)). While a proceeding is pending, no later proceeding of the same kind may be instituted for the same goods, and a pending reexamination also blocks a new expungement (37 C.F.R. § 2.92(d)(3)-(4)). Short of those bars, the USPTO has set no limit on the number of petitions that can be filed against a registration (86 Fed. Reg. at 64,301), although the statute lets the Director adopt limits by regulation.

Two practical consequences follow. The first petition against a registration matters for everyone, because a registrant who survives it is protected from every later petitioner as to those goods. And a petitioner should challenge only goods it can document; a sloppy omnibus petition that gets instituted and loses as to some goods immunizes those goods from future TMA challenges.

Parallel TTAB and court cases

Filing a petition does not stay anything else: not a pending TTAB case, and not the deadline to respond to an office action in a pending application (37 C.F.R. § 2.91(g)). The Board may suspend its own case pending a TMA proceeding that may bear on it (TBMP § 510.02(a)), and after Common Sense Press a registrant-favorable result does not end the Board case. An applicant whose application has been refused on the basis of the challenged registration can ask the examining attorney to suspend action, because a pending Office proceeding "relevant to the issue of initial or continued registrability of a mark" is prima facie good cause (37 C.F.R. § 2.67). The request must be made in a timely response; a petition sitting in the USPTO's queue does not extend the applicant's own deadline.

Section 14(6): never used, at any time after three years

The TMA also added a new ground to the cancellation statute. A petition to cancel may be filed "[a]t any time after the 3-year period following the date of registration, if the registered mark has never been used in commerce on or in connection with some or all of the goods or services recited in the registration" (15 U.S.C. § 1064(6)). Section 44(e) and Section 66 registrants keep an excusable-nonuse defense. Because the ground is in § 1064, it is also available as a counterclaim in court under 15 U.S.C. § 1119.

Section 14(6) fills two gaps. It has no ten-year ceiling, so a never-used registration that has been renewed is still vulnerable. And it is litigated inter partes, with discovery, which matters when the registrant claims private sales the public record cannot confirm or refute. The price is the usual price of a Board case: the petitioner must establish its entitlement to a statutory cause of action under Lexmark and Corcamore, and must prosecute the case through trial if the registrant answers. For the mechanics, see Petitioning to Cancel a Trademark Registration: A Practical Checklist and the TTAB Practice Toolkit: Oppositions, Cancellations, and the Trademark Trial and Appeal Board from Pleading to Appeal.

Choosing the right tool: expungement, reexamination, cancellation, or fraud

The menu

Tool What the challenger must show When it is available Who may bring it Discovery
Expungement Mark never used on the challenged goods Years 3 to 10 after registration Anyone None
Reexamination Mark not in use on the relevant date Within 5 years of registration Anyone None
Cancellation, nonuse at filing (void ab initio) Not in use when the application was filed or by the statement-of-use deadline Within 5 years of registration A party entitled to a cause of action Yes
Cancellation, never used (§ 1064(6)) Mark never used on the challenged goods Any time after year 3 A party entitled to a cause of action Yes
Cancellation, abandonment Use discontinued with intent not to resume; three years of nonuse is prima facie abandonment Any time A party entitled to a cause of action Yes
Cancellation, fraud Knowing, material false statement made with intent to deceive the USPTO Any time A party entitled to a cause of action Yes

Abandonment: the claim for marks that were used and then dropped

Expungement only reaches marks that were never used. If the registrant once sold goods under the mark and then stopped, the claim is abandonment. A mark is abandoned "[w]hen its use has been discontinued with intent not to resume such use," intent "may be inferred from circumstances," and "[n]onuse for 3 consecutive years shall be prima facie evidence of abandonment" (15 U.S.C. § 1127); see also Restatement (Third) of Unfair Competition § 30 (1995); McCarthy on Trademarks and Unfair Competition § 17:5. The leading cases define the elements in ways that matter for strategy:

Abandonment needs discovery more often than not, because intent lives in the registrant's files. That is why it belongs at the TTAB or in court rather than in an ex parte petition.

Fraud: powerful, rare, and hard to prove

A registration "obtained fraudulently" may be cancelled at any time (15 U.S.C. § 1064(3)), and a person injured by a fraudulently procured registration may recover damages (15 U.S.C. § 1120). For six years the TTAB applied a "knew or should have known" standard to false claims of use, and cancelled registrations wholesale for overclaimed goods. The Federal Circuit ended that in In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009): fraud requires that the applicant or registrant "knowingly makes a false, material representation with the intent to deceive the PTO," proven "to the hilt" by clear and convincing evidence. Bose's general counsel honestly, if wrongly, believed that shipping repaired tape players back to customers was use, so there was no fraud, and the right remedy for the overclaim was to restrict the registration rather than cancel it. Fraud in maintaining a registration still counts: a knowingly false renewal or Section 8 filing supports cancellation under Torres v. Cantine Torresella S.r.l., 808 F.2d 46 (Fed. Cir. 1986). A false Section 15 incontestability declaration does not, because that declaration is not needed to keep the registration alive. Great Concepts, LLC v. Chutter, Inc., 90 F.4th 1333 (Fed. Cir. 2023).

The point of expungement and reexamination is that they do not care about intent. A registrant that innocently overclaimed and a registrant that pasted its logo onto a competitor's product photo lose the same goods in the same way. When the problem is nonuse, the TMA tools are almost always a better first move than a fraud claim; save fraud for cases with documentary proof of a deliberate lie, and expect it to be tried rather than decided on summary judgment.

A decision path

  1. Is it still an application? Use a letter of protest (below) before or shortly after publication, and calendar the opposition deadline. See Filing a TTAB Notice of Opposition: A Practical Checklist.
  2. How old is the registration? Under three years: reexamination (if use-based) or a full cancellation with every ground, including likelihood of confusion. Three to five years: expungement, reexamination, or cancellation. Five to ten years: expungement, Section 14(6), abandonment, or fraud. Over ten years: Section 14(6), abandonment, or fraud.
  3. Is the proof public? If the case depends on the registrant's private sales records or internal plans, go to the Board, where discovery exists. If the absence of use is visible from the outside (no website, no listings, a stock-photo specimen), an ex parte petition is cheaper and faster.
  4. Will the registrant fight? Absent or foreign filing-mill registrants rarely respond, which favors a petition. A real competitor with a real business may respond with real evidence, and the matter may be better resolved through negotiation, a coexistence agreement, or litigation.
  5. What is the business deadline? If a launch depends on your own application, file the petition and ask your examining attorney to suspend while it runs.

Letters of protest: stopping a bad application before it registers

The cheapest time to deal with a bad mark is before it becomes a registration. A letter of protest lets any third party put evidence in front of the examining attorney without becoming a party to anything. The USPTO accepted protests for decades as a matter of examination practice; the TMA codified the practice in 15 U.S.C. § 1051(f), which requires the Director to decide within two months whether the evidence goes into the record, makes that decision "final and non-reviewable," and preserves every party's right to raise the same issue elsewhere. The procedure is in 37 C.F.R. § 2.149 and TMEP § 1715.

What a protest can raise. Grounds the examining attorney could raise on their own: likelihood of confusion with a registered mark or an earlier-filed application, genericness, mere descriptiveness, geographic descriptiveness or misdescriptiveness, use of a registered mark as a generic term in the identification, pending litigation that seeks cancellation or abandonment, and other legal grounds such as a specimen that does not show use (TMEP § 1715.01(a)). What it cannot raise: prior common-law rights, ownership disputes, fraud, public opinion, or disagreement with how the examiner is handling the case (TMEP § 1715.01(b)). Those belong in an opposition.

Timing and the two standards. A protest must be filed no later than 30 days after publication (37 C.F.R. § 2.149(c)). Before publication, the evidence need only be "relevant to the identified ground(s) for refusal." On or within 30 days after publication, it must "establish a prima facie case for refusal," such that failing to refuse "would likely result in issuance of a registration in violation of the Act" (37 C.F.R. § 2.149(d)). File early. A protest does not stay or extend the opposition period (37 C.F.R. § 2.149(e)), so a protestor that might oppose should request an extension of time to oppose at the same time.

Form and limits. The protest is filed through TEAS with a fee under 37 C.F.R. § 2.6(a)(25) (it was $50 when introduced in 2021). It must include an itemized evidence index that does not identify the protestor and contains no legal argument, and the evidence is capped at 10 items per ground and 75 pages in total unless special circumstances are explained (37 C.F.R. § 2.149(f)). Internet evidence must show the URL and the publication or access date; third-party registrations must come from USPTO records and show current status and title. The USPTO does not consider declarations, surveys, search reports, bare lists of registrations or websites, or evidence of prior use or actual confusion (TMEP § 1715.05). If the record shows the examiner already considered the ground, the protest may be refused entry (37 C.F.R. § 2.149(g)), although the TMEP makes exceptions for significant new evidence and for clear error (TMEP § 1715).

What happens next. The protestor learns only whether the submission was received and whether it complied (37 C.F.R. § 2.149(j)); it may not contact the examiner (37 C.F.R. § 2.149(k)). If the protest is accepted, only the ground and the evidence, stripped of the protestor's identity, go into the file. Before publication the examining attorney decides independently whether to act; after publication, given the higher acceptance standard, a refusal or requirement ordinarily follows (TMEP § 1715.04). A pending use-based application backed by a doctored specimen is the textbook case: a short index showing that the specimen image appears on a third party's product listing years earlier often ends the application without a fight. For examining-attorney practice generally, see Responding to a Trademark Office Action Checklist: A Practical Checklist.

Shorter response periods and the post-registration audit program

Three months, not six

For most of the Lanham Act's history an applicant had six months to answer an office action. The TMA amended 15 U.S.C. § 1062(b) to allow "such shorter time that is not less than 60 days, as prescribed by the Director," provided extensions aggregating six months remain available. Since December 3, 2022, the response period for an office action in a Section 1 or Section 44 application has been three months, extendable once by three months for a fee; Madrid applications under Section 66(a) keep six months (37 C.F.R. § 2.62(a)). Expungement and reexamination run on their own clock, three months plus one optional month (37 C.F.R. § 2.93(b)(1)). Post-registration office actions state their own deadlines, and the action itself, read with 37 C.F.R. § 2.163(b), controls. The practical change is cultural as much as legal: docketing systems built around six-month habits are how registrations and applications get lost.

Audits: the USPTO checks the maintenance declaration

Every registrant must file a declaration of use between the fifth and sixth years after registration and with each renewal (15 U.S.C. § 1058; 15 U.S.C. § 1059; for Madrid registrations, 15 U.S.C. § 1141k). The rules let the Office demand "such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary" to examine that declaration "or for the Office to assess and promote the accuracy and integrity of the register" (37 C.F.R. § 2.161(b); for Section 71 declarations, 37 C.F.R. § 7.37). That authority is the basis of the Post Registration Proof of Use Audit Program, made permanent in 2017 after a pilot. Registrations become eligible for selection when they list at least one class with four or more goods or services, or at least two classes with two or more each, and an audited owner must prove use for two additional items in each audited class. Locke, 48 AIPLA Q.J. at 420.

An audit office action is a test the registrant has already half-failed if it swore to use it cannot prove. Goods the owner cannot support are deleted; failure to respond cancels the whole registration. Deleting goods after the declaration is filed but before it is accepted costs a per-class fee (37 C.F.R. § 2.161(c)), which is the USPTO's way of charging for overclaiming, and the Office has said it may refer attorneys who sign plainly overbroad declarations to its Office of Enrollment and Discipline. The cheap way to pass an audit is to delete unused goods before signing the declaration, a step the Section 8 Declaration of Continued Use: A Practical Checklist and the Trademark Maintenance and Renewal Checklist: A Practical Checklist build into the workflow.

The restored presumption of irreparable harm

The TMA's most litigated provision has nothing to do with the register. For decades, courts presumed that a trademark owner who showed likely confusion would suffer irreparable harm, on the theory that damage to reputation and goodwill cannot be measured or repaired with money. Then eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006) rejected categorical rules for permanent injunctions in patent cases, and Winter v. Natural Resources Defense Council, Inc., 555 U.S. 7 (2008) required a movant for preliminary relief to show that irreparable harm is likely, not merely possible. Several circuits concluded that the trademark presumption could not survive. The Ninth Circuit abandoned it in Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc., 736 F.3d 1239 (9th Cir. 2013), and the Third Circuit did the same for Lanham Act false advertising in Ferring Pharmaceuticals, Inc. v. Watson Pharmaceuticals, Inc., 765 F.3d 205 (3d Cir. 2014). Other courts kept presuming harm. The result was a circuit split over the most important remedy in trademark law.

Congress resolved it. Under 15 U.S.C. § 1116(a), a plaintiff "shall be entitled to a rebuttable presumption of irreparable harm upon a finding of a violation" when seeking a permanent injunction, or "upon a finding of likelihood of success on the merits" when seeking a preliminary injunction or TRO. The presumption covers infringement, false designation and false advertising, dilution, and the other violations listed in § 1116(a).

The Third Circuit gave the first careful account of how the presumption works in Nichino America, Inc. v. Valent U.S.A. LLC, 44 F.4th 180 (3d Cir. 2022). Absent contrary statutory language, presumptions in civil cases operate under Fed. R. Evid. 301: they shift the burden of producing evidence, not the burden of persuasion. A court therefore asks only whether the defendant's rebuttal evidence is enough to let a reasonable factfinder conclude that irreparable harm is unlikely; "[o]ver-scrutinizing the persuasive value of evidence proffered on rebuttal would violate Rule 301." If the presumption is rebutted, the plaintiff must prove irreparable harm the old way. In Nichino, closely balanced confusion factors and evidence of sophisticated agricultural buyers were enough, and the court affirmed denial of the injunction. The Ninth Circuit, the court of Herb Reed, now applies the statute as written: in AK Futures LLC v. Boyd Street Distro, LLC, 35 F.4th 682 (9th Cir. 2022), the plaintiff was "entitled to a rebuttable presumption of irreparable harm" because it had shown likely success, and the defendant failed to overcome it.

For plaintiffs, the presumption is valuable but not self-executing. It arrives only after a showing of likely success, and it can be rebutted by the same kinds of facts that defeated motions before the TMA, including unexplained delay of the sort that sank the motion in Wreal, LLC v. Amazon.com, Inc., 840 F.3d 1244 (11th Cir. 2016). For defendants, the job is to produce something concrete: delay, sophisticated purchasers, absence of actual confusion despite overlap, or evidence that the plaintiff is not using the mark in the relevant market at all. That last point is where the TMA's two halves meet. A plaintiff suing on a registration it never used invites a Section 14(6) counterclaim, and a mark with no goodwill behind it is hard to injure irreparably. The procedure is covered in Preliminary Injunctions and Temporary Restraining Orders: Emergency Relief in Federal Court; the bond and notice rules are in Fed. R. Civ. P. 65.

Strategy for each side

For the petitioner or blocked applicant

  • Start with the registration file. Pull the TSDR record and look hard at the specimens, the filing basis, the dates, and the identification. Run reverse image searches on product photos. Check the owner's other registrations, including any already cancelled in TMA proceedings.
  • Match the tool to the calendar. Compute the third, fifth, and tenth anniversaries of registration before anything else. A reexamination window that closes next month changes priorities.
  • Challenge only what you can prove. Narrow, well-documented petitions get instituted; omnibus petitions get trimmed, and goods the registrant defends become immune to later petitions.
  • Think before you send a demand letter. In expungement, genuine use that begins before the petition is filed defeats the challenge for those goods. If the goal is cancellation rather than a negotiated surrender, file first.
  • Protect your own application. Request suspension under 37 C.F.R. § 2.67 in a timely office-action response, and keep the response deadline.
  • Keep the TTAB in reserve. If the registrant answers with evidence that needs testing, Section 14(6), abandonment, and void-ab-initio claims (in the first five years) all remain available.

The step-by-step version, with filing details, is in Filing or Responding to a Trademark Expungement or Reexamination Petition: A Practical Guide, and the investigation templates are in the Register Clearing Toolkit: Nonuse Investigations, Petition Templates, and Post-Registration Audit Responses. Test-purchase records built for online enforcement translate directly; see the Online Trademark Enforcement Toolkit: Platform Notices, Test Purchase Records, and Contributory Liability Demands.

For the registrant

  • Treat the institution notice as a trial date. The response is the record. There is no discovery, no later evidentiary hearing, and no new evidence on appeal.
  • Prove use the way your industry does business. Dated invoices, shipping records, purchase orders, sales reports, archived web pages, catalogs, packaging photographs with provenance, advertising invoices. Everwise expects what a genuine business in your field would have.
  • Let the declarant state facts. Who sold what, to whom, when, under what mark, and where the documents came from. "We have made bona fide use" is a conclusion and carries no weight.
  • Delete what you cannot support. Losing a few goods is better than losing credibility on all of them, and a deletion in a response is clean and immediate.
  • Read your identification the way the Board will. If your actual products do not fit the words, Locus Link says the words win.
  • Keep a use archive now. The questions arrive years after the facts. A short, dated file for each registration (first sale, specimens, a few invoices per year, web captures) turns a crisis into an afternoon. See the Trademark Statement of Use Checklist: A Practical Checklist and Trademark Specimen Preparation Checklist: A Practical Checklist for what to keep at the front end.

For counsel

Every statement of use, Section 8 declaration, and petition now carries a realistic chance of being tested against archived evidence. A reasonable inquiry before signing is required by 37 C.F.R. § 11.18, and the audit data show that many declarations are signed without one. When a client cannot document use by a deadline, the honest options are a new intent-to-use application or a narrower filing. Everwise is the cautionary tale for the alternative.

Costs and practical realities

The government fee for a petition is charged per class challenged ($400 per class at launch, subject to the current fee schedule). The professional cost of a straightforward petition is mostly investigation time: a structured search of archives, marketplaces, and public records, a verified statement, and an evidence index, usually a matter of days of work rather than weeks. Investigator fees for test purchases and translation of foreign corporate records are the common add-ons. A contested TTAB cancellation through trial costs many times more, although the comparison is not always that stark, because many nonuse cancellations end in default. During one 2018 to 2019 period, the USPTO's Trademark Public Advisory Committee reported a high default rate in nonuse and abandonment cancellations, with cancellation rates of 62% for Board cases based solely on abandonment and 53% for cases based solely on nonuse. Locke, 48 AIPLA Q.J. 403 (citing TPAC's 2019 annual report).

Timing is measured in months. In Locus Link, the petition was filed in July 2022, the proceeding was instituted in September, and the final action issued in February 2023; the Board's decision on appeal came in July 2024. In Everwise, institution came about six weeks after the petition, the final action about six months later, and the Board's decision more than two years after that. A blocked applicant should plan for its own application to sit in suspension for the duration.

The petition is public. It is sent to the registrant and sits in the registration's TSDR file, so a petitioner who wants anonymity must file through a nominee from the start, subject to the Director's power to require disclosure of the real party in interest.

Common mistakes

Petitioners

  • Filing reexamination against a Section 44(e) or 66(a) registration (only Section 1 registrations qualify) or expungement before the third anniversary.
  • Proving that the mark is not in use today instead of proving nonuse during the relevant period.
  • Screenshots without URLs and access dates, unlabeled exhibits, and evidence dumps without an index.
  • Challenging goods for which the investigation found some use, which raises candor problems and wastes the estoppel.
  • Treating a USPTO database search as evidence of nonuse.
  • Letting your own office-action deadline lapse because "the petition is pending."

Registrants

  • Missing the institution notice because the correspondence email on file is stale.
  • Resubmitting the original specimen and a one-paragraph declaration.
  • Arguing for a broader reading of the identification instead of proving use on the goods as written.
  • Filing a surrender or amendment separately without reporting it in a timely response.
  • Offering evidence of use after the relevant date in a reexamination.
  • Appealing with an incomplete record, then discovering that the Board cannot remand.

Worked example: a startup blocked by a 2016 registration with a doctored specimen

The facts. Larkspur Labs, a Denver startup, sells a smart desk lamp under the name LUMALOOP. It filed a use-based application in January 2026 for lamps in Class 11 and a companion app in Class 9. In April 2026 the examining attorney refused the Class 11 goods under Section 2(d), citing a registration for LUMALOOP covering "lamps; desk lamps; LED light bulbs; lighting fixtures," owned by a trading company headquartered abroad. The cited registration issued on October 18, 2016, from a use-based application filed in February 2016. Larkspur's response is due in July.

Larkspur's counsel pulls the file. The 2016 specimen is a photograph of a desk lamp with LUMALOOP on its base. A reverse image search finds the identical photograph, minus the word, in a 2014 product listing by an unrelated European lamp maker. In 2022 the registrant filed a combined Section 8 and Section 15 declaration, through a U.S. attorney of record, with a new specimen: a screenshot of a "store" page on a domain that the Wayback Machine shows as a parked page before and after the screenshot's date, with no cart and no product pages. USPTO records show that the registrant owns dozens of registrations for unrelated brands across many classes, several already cancelled in expungement proceedings.

The calendar. The anniversaries drive everything:

Option Window Status in April 2026
Reexamination Within 5 years of registration (to Oct. 18, 2021) Closed
Expungement Years 3 to 10 (to Oct. 18, 2026) Open, about six months left
Cancellation for nonuse at filing (void ab initio) First 5 years Closed
Cancellation under § 1064(6), never used Any time after year 3 Open, no deadline
Cancellation for abandonment or fraud Any time Open, but needs proof of use-then-stop or of intent

The investigation. Over two weeks, a paralegal documents searches of the registrant's domain history; Amazon, Walmart, eBay, Etsy, Wayfair, and Home Depot listings, current and archived; Google Shopping; lighting trade publications; the registrant's corporate website, which lists hundreds of unrelated brands; and the USPTO's proceedings database. An investigator emails the address on the "store" page to ask about buying ten lamps; the message bounces. Each search is logged with the date, the search terms, and the result, and each exhibit carries its URL and capture date. Nothing shows a LUMALOOP lamp, bulb, or fixture ever sold in the United States. Because the specimens look fabricated, the team also notes that the evidence would support a fraud theory, since a knowingly false Section 8 filing can support cancellation under Torres (the Section 15 portion cannot, after Great Concepts), but fraud needs clear and convincing proof of intent and a contested Board case. It is a backup, not a first move.

The moves. Counsel does three things in the same week.

  1. Files an expungement petition for all four items, with a verified statement in numbered paragraphs describing each source, how and when it was searched, and what it showed; 14 labeled exhibits; an itemized index tying each exhibit to each item; and the per-class fee. It does not send a demand letter first. Any genuine use the registrant began before the petition date would defeat expungement for those goods, and there is no reason to invite a last-minute shipment of bulbs.
  2. Responds to Larkspur's own office action on time, arguing the merits briefly and requesting suspension under 37 C.F.R. § 2.67 pending the expungement.
  3. Dockets the Section 14(6) option, which survives the October 2026 cutoff, and confirms that Larkspur, as a blocked applicant with a commercial interest in registering its own mark, has an entitlement to a cause of action under Lexmark if the case has to go to the Board.

Outcome A: silence. The Director finds a prima facie case and institutes on all four items. The office action goes to the registrant and its attorney of record. No response arrives within three months or the optional fourth month, the proceeding terminates, and the registration is cancelled. Larkspur's examining attorney lifts the suspension, withdraws the Section 2(d) refusal, and approves the application for publication. Total government fees: one per-class petition fee. Total elapsed time from petition to cancellation: often well under a year, depending on the USPTO's queue.

Outcome B: a partial fight. The registrant responds with 2019 invoices for 2,000 LED light bulbs sold to a U.S. importer, packaging photos, and a declaration from its sales manager, and deletes "lamps; desk lamps; lighting fixtures." Expungement fails as to the bulbs, because the 2019 sales are use before the petition, and no later expungement proceeding can be instituted on that item. If the examining attorney still finds LED bulbs related to Larkspur's lamps, Larkspur turns to the Board: three years without sales since 2019 make a prima facie case of abandonment for the bulbs, discovery can test whether the 2019 sales were genuine or a one-off, and the fabricated specimens support a fraud count. The expungement petition did not win everything, but it narrowed a four-item registration to one item for the price of a petition, and it forced the registrant to show its hand.

The other side of the table. Had the registrant been a real business, its best response would have been the one Everwise describes: industry-typical documents, a declarant with firsthand knowledge stating facts, and prompt deletion of the goods it could not support. A clearance search that flags a registration should also assess whether it looks like deadwood; see How to Conduct a Comprehensive Trademark Clearance Search.

Frequently asked questions

Do I need a lawyer to file an expungement or reexamination petition? A petitioner domiciled in the United States may file on its own behalf; a petitioner domiciled abroad must designate a U.S.-licensed attorney (37 C.F.R. § 2.91(c)(5)). Either way, the verified statement is sworn evidence made under penalty of 18 U.S.C. § 1001, and a sloppy investigation is the most common reason petitions fail.

Can the petition be filed anonymously? Effectively, yes. The real party in interest may file through another person, though the Director may require identification of the real party (37 C.F.R. § 2.91(h)). Everything in the petition becomes public and goes to the registrant.

Can an incontestable registration be expunged? Yes. The expungement statute operates notwithstanding the incontestability provisions of § 1115(b), and Section 14(6) cancellation also reaches incontestable registrations.

What if the mark was used once, years ago? Then the mark was not "never used," and expungement fails for those goods. Reexamination still works if the registration is under five years old and the use came after the relevant date. Otherwise the claim is abandonment, litigated at the Board with discovery.

Can I use these proceedings to attack a generic or descriptive registration? No. Expungement and reexamination address only use. Genericness, descriptiveness, and likelihood of confusion are TTAB or court issues; see Genericness, Genericide, and Acquired Distinctiveness: Where Trademark Protection Begins and Ends.

If the Director refuses to institute, can I appeal? No; the decision is final and non-reviewable. But estoppel arises only when a proceeding is instituted and the registrant proves use, so a refusal leaves room for a better-documented petition and for every TTAB remedy.

I received an institution notice. Can I just delete the goods? Yes. A deletion in a timely response moots the proceeding for those goods, but it is permanent, and a fee applies if a Section 8 or 71 declaration is pending. If you need the goods, prove use instead.

Does a letter of protest stop the opposition clock? No. A protest does not stay or extend the time to oppose (37 C.F.R. § 2.149(e)), so request an extension of time to oppose if you might need one.

Does the irreparable-harm presumption apply at the TTAB? No. The Board decides registration rights and does not issue injunctions; the presumption in § 1116(a) governs requests for injunctions in court.

Practical takeaways

  • Two questions, two tools. Expungement asks whether the mark was ever used (years 3 to 10); reexamination asks whether it was in use on the relevant date (first 5 years, Section 1 registrations only).
  • The investigation is the case. Point it at the relevant period, log every source with dates, capture URLs, and index the exhibits to the goods.
  • The registrant's response is the trial. Industry-typical documents, factual declarations, and candid deletions win; recycled specimens and conclusions lose.
  • Read the identification literally. Locus Link cancelled registrations because the goods sold were not the goods registered.
  • Token use is not use. Everwise cancelled a registration supported by a deadline-day tagline, after the examining attorney had accepted it.
  • Nothing here is preclusive against the petitioner. A registrant win blocks later TMA petitions on those goods, but the Board remains open.
  • Mind every clock. Three-month office-action periods, the third, fifth, and tenth anniversaries, the 30-day post-publication protest deadline, and the three-month appeal window.
  • Plaintiffs get a presumption, not a pass. Section 1116(a) presumes irreparable harm after likely success, but defendants can rebut it with real evidence, including the plaintiff's own nonuse.

This document is general information, not legal advice for any particular situation; the law changes, and the facts matter.

Related Documents

Related Articles

Related Guides

Related Checklists

Related Toolkits