Filing or Responding to a Trademark Expungement or Reexamination Petition: A Practical Guide

Summary. This guide walks petitioners and registrants through a trademark expungement or reexamination proceeding under 15 U.S.C. §§ 1066a and 1066b and 37 C.F.R. §§ 2.91 to 2.94, step by step and in the order things actually happen. For petitioners, it covers computing the filing windows, choosing between expungement, reexamination, and a TTAB cancellation, planning and documenting a reasonable investigation, assembling the evidence index and verified statement, and filing through TEAS. For registrants, it covers reading the institution notice, calendaring the three-month deadline, gathering evidence of use that satisfies the statute rather than the specimen rules, deciding what to defend and what to delete, claiming excusable nonuse where available, and preserving the record for appeal. It explains the decisions that shape practice, including In re Locus Link and Common Sense Press v. Van Sciver, along with timelines, fees, special situations, and the rules on reconsideration, TTAB appeals, and Federal Circuit review. A worked example follows a coffee roaster that receives a reexamination notice for services it launched after its statement-of-use deadline, and the guide closes with common mistakes, an FAQ, and practical takeaways.

The office action arrives on an ordinary Tuesday with an unfamiliar title: a combined notice of institution and nonfinal office action in a reexamination proceeding. Attached is a stranger's petition, forty pages of archived web pages and marketplace screenshots, and a demand that the registrant prove it was using its mark on a date more than two years ago. The clock reads three months. On the other side of the same file is a business that spent two weeks building that petition because a registration it believed was hollow stood between it and a product launch. This guide is for both of them.

The short answer

If you are the petitioner, you are asking the USPTO Director to start an ex parte proceeding against someone else's registration. Expungement (15 U.S.C. § 1066a) is for goods or services on which the mark was never used, and is available from the third through the tenth anniversary of registration. Reexamination (15 U.S.C. § 1066b) is 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 statement-of-use deadline or amendment-to-allege-use date of an intent-to-use application), and is available for five years after registration. You must conduct and describe a reasonable investigation, support it with a verified statement and indexed evidence, and pay a per-class fee (37 C.F.R. § 2.91). Once you file, your role is over: you cannot amend the petition, argue with the examiner, or appeal a refusal to institute.

If you are the registrant, you have three months from the issue date of the office action, plus one optional month for a fee, to prove use with real evidence, delete goods, or (in an expungement of a Section 44 or 66 registration) show excusable nonuse (37 C.F.R. § 2.93). Silence means cancellation of the challenged goods. Your response is effectively the trial record: if the examiner issues a final action, you may request reconsideration or appeal to the Trademark Trial and Appeal Board (TTAB) within three months, but no new evidence comes in once the appeal is filed, and after the Board the only further review is in the Federal Circuit on the same record.

For both sides, the work is front-loaded. Petitions fail because the investigation was thin or aimed at the wrong period. Responses fail because the registrant resubmitted its old specimen, offered a conclusory declaration, or tried to stretch the identification of goods. Everything below is about avoiding those failures.

The legal framework in one place

The Trademark Modernization Act of 2020 (TMA), Pub. L. No. 116-260, div. Q, tit. II, subtit. B, created both proceedings. The USPTO's implementing rules, effective December 18, 2021, are at 37 C.F.R. §§ 2.91 to 2.94, explained in the preamble to the final rule, Changes To Implement Provisions of the Trademark Modernization Act of 2020, 86 Fed. Reg. 64,300 (Nov. 17, 2021), and applied by examiners under TMEP § 1716. These are the provisions you will cite and live by:

Two definitions matter at every step. Use in commerce means "the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark"; for goods, the mark must be on the goods or their packaging or displays and the goods must be sold or transported in commerce, and for services, the mark must be used in selling or advertising services that are actually rendered (15 U.S.C. § 1127). The relevant date in reexamination is the application filing date for a use-based (Section 1(a)) application, and for an intent-to-use (Section 1(b)) application the later of the date an amendment to allege use was filed or the expiration of the statement-of-use deadline, including all approved extensions (37 C.F.R. § 2.91(a)(2)).

The decisions that shape practice

The TTAB has issued few precedential decisions under the TMA so far, and the ones it has issued are practical rather than doctrinal. Read them with the Federal Circuit's long line of use cases, which the Board applies in these proceedings exactly as it does in any other.

In re Locus Link USA, Expungement Nos. 2022-100137E & 2022-100138E (T.T.A.B. July 1, 2024) (precedential). Two SMARTLOCK registrations covered "Components for air conditioning and cooling systems, namely, evaporative air coolers." The registrant sold refrigerant fittings, not evaporative air coolers, and argued that its identification really meant components for cooling systems. The Board held that the words after "namely" define the goods, so the registrations covered evaporative air coolers; the fittings were different goods that would be classified elsewhere (TMEP §§ 1402.03(a), 1402.05(a)). The Board also refused to give weight to the examining attorney's acceptance of the original specimens, because earlier examination decisions do not bind the Office, citing In re Nett Designs, Inc., 236 F.3d 1339 (Fed. Cir. 2001). Both registrations were cancelled. Lesson for petitioners: compare the identification, word by word, with what the registrant actually sells. Lesson for registrants: a TMA response permits deletions, not reinterpretations, so the time to fix an identification is before anyone challenges it. The Identifying Goods and Services and Trademark Classification: A Practical Checklist covers drafting identifications that match the business.

Common Sense Press Inc. v. Van Sciver, Cancellation No. 92075375 (T.T.A.B. May 19, 2023) (precedential). A petitioner in a pending cancellation filed a reexamination petition, the Board suspended the cancellation, and the reexamination ended in the registrant's favor. The Board held that an ex parte TMA proceeding has no claim- or issue-preclusive effect against the petitioner, who is not a party and cannot appeal, relying 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 it resumed the cancellation. The statutory estoppel still applies: once a registrant proves use on particular goods, no later TMA petition may challenge those goods, whoever files it.

The use cases. Because the registrant's evidence must be "consistent with" the statutory definition of use (15 U.S.C. § 1066a(e); 15 U.S.C. § 1066b(f)), examiners decide these proceedings with the same precedents that govern use everywhere in trademark law:

• Advertising a service that is not yet being rendered is not use: Couture v. Playdom, Inc., 778 F.3d 1379 (Fed. Cir. 2015) (a website announcing readiness to provide services did not support registration).
• Preparations to offer a service are not use: Aycock Engineering, Inc. v. Airflite, Inc., 560 F.3d 1350 (Fed. Cir. 2009).
• Items that exist only to support another business are not goods in trade (TMEP § 1202.06): Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376 (Fed. Cir. 2012) (software that merely enabled online sales of contact lenses was not a good in trade).
• The commerce requirement is easy to meet once genuine sales occur: Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986 (Fed. Cir. 2016) (two hats sold to an out-of-state buyer); Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 929 F.2d 662 (Fed. Cir. 1991) (single restaurant serving interstate travelers).
• The 1988 "bona fide use" language was aimed at token and preparatory uses: M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368 (Fed. Cir. 2015); see also TMEP § 901.02.
• Where use exists for some goods but not others, the remedy is deletion of the unused goods, not cancellation of the whole registration: Grand Canyon West Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696 (T.T.A.B. 2006).

Excusable nonuse. For Section 44(e) and 66(a) registrants defending expungement, the Federal Circuit's abandonment cases supply the standard for "special circumstances." Business choices are not enough: Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575 (Fed. Cir. 1990) (a decision not to launch JPS cigarettes in the U.S. market did not excuse nonuse), and Rivard v. Linville, 133 F.3d 1446 (Fed. Cir. 1998) (the registrant needed evidence of the activities a reasonable businessman with a bona fide intent to use the mark would undertake).

Part one: filing a petition, step by step

Step 1: Pull the registration file and compute the windows

Start in the USPTO's TSDR system with the registration you want to remove, and build a one-page fact sheet before you spend an hour on investigation. Record:

• the registration number and date, register (Principal or Supplemental), and classes;
• the filing basis for each class (Section 1(a), 1(b), 44(e), or 66(a)) and any basis amendments;
• the application filing date and, for intent-to-use filings, the notice of allowance date, every extension, the final statement-of-use deadline, and the date any statement of use or amendment to allege use was filed;
• every specimen in the file, original and post-registration, and every office action about specimens;
• every Section 8, 15, 9, or 71 filing and its specimen;
• the owner, its domicile, its attorney of record, and its correspondence email;
• assignments recorded against the registration; and
• any past or pending expungement or reexamination proceeding, which may trigger the bars in 37 C.F.R. § 2.92(d).

Then compute three dates. The third anniversary of registration opens expungement. The fifth anniversary closes reexamination, and with it the TTAB grounds limited to the first five years by 15 U.S.C. § 1064(1), including likelihood of confusion and the claim that a use-based registration was void because the mark was not in use when the application was filed. The tenth anniversary closes expungement for petitions filed after December 27, 2023 (37 C.F.R. § 2.91(b)). The petition must also be filed while the registration is in force, so check that it has not already been cancelled for a missed maintenance filing, which would make the effort unnecessary.

A short example shows why the dates matter. Suppose a registration issued on June 1, 2021, from an intent-to-use application whose last statement-of-use deadline, after extensions, was March 15, 2021. Reexamination is available through June 1, 2026, and asks whether the mark was in use on the listed goods by March 15, 2021, even if the statement of use was filed earlier. Expungement opened on June 1, 2024, and runs through June 1, 2031.

Step 2: Decide whether a petition is the right tool

If both expungement and reexamination fit, pick the theory you can prove for each good. Reexamination is usually easier because it turns on one date, and a doctored specimen filed on that date is often the best evidence. The Director may consolidate concurrent petitions (37 C.F.R. § 2.92(e)), but while a reexamination is pending no later expungement may be instituted for the same goods (37 C.F.R. § 2.92(d)(4)), so plan the sequence rather than filing everything and hoping. Remember that anyone may file; a petitioner needs none of the commercial interest that the Federal Circuit requires of opposers and cancellation petitioners under Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014), Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020), and Curtin v. United Trademark Holdings, Inc., 137 F.4th 1359 (Fed. Cir. 2025).

One judgment call deserves its own paragraph: whether to contact the registrant first. A demand letter sometimes produces a voluntary surrender under 37 C.F.R. § 2.172 or a deletion under 37 C.F.R. § 2.173, which is cheaper for everyone. But in expungement, any genuine use that begins after registration and before the petition is filed defeats the challenge for those goods (15 U.S.C. § 1066a(g)). If the registrant is an absent filing mill, file first. If it is a real business that may simply have overclaimed, a short letter can save a proceeding.

Step 3: Plan the investigation around the relevant date

The rule asks for "an appropriately comprehensive search" that 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)). Every word of that sentence should shape the plan.

• Frame the question per good. For expungement: was the mark ever used on this item, at any time before the petition? For reexamination: was it in use on this item on or before the relevant date?
• Fix the search period. For expungement, from the earliest claimed use to the present. For reexamination, the months leading up to the relevant date, plus enough of the period afterward to show when the mark actually first appeared, if it ever did.
• Map the trade channels. Ask where a real seller of these goods would leave traces. Consumer products sold online leave marketplace listings, reviews, social posts, and retailer pages. Industrial goods leave distributor catalogs, trade-show exhibitor lists, and spec sheets. Services leave a physical location, licenses, booking pages, and customer reviews. Regulated products leave regulatory filings, such as federal label approvals for alcoholic beverages or equipment authorizations for radio devices, which make excellent evidence because their absence is hard to explain.
• Use the rule's list as a checklist, not a ceiling. The sources in 37 C.F.R. § 2.91(d)(2) are trademark records, the registrant's sites and media, sales and advertising channels, reviews, business and regulatory filings, attempts to contact or buy from the registrant, and litigation records. You "need not check all possible appropriate sources," but you should check the ones a skeptical examiner would expect for these goods.
• Decide who will sign. The verified statement must come from someone with firsthand knowledge of the searches, so the person who runs them (or who directly supervises and reviews them) should be the declarant.

Step 4: Run the investigation and record it as you go

Keep a contemporaneous log: date and time, source, exact search terms, filters used, result, and the file name of each capture. A log written afterward from memory is the most common weakness in petitions, because the verified statement must say how and when each search was done (37 C.F.R. § 2.91(c)(8)).

• Archived web pages. Use the Wayback Machine's calendar view to show which dates were captured, then capture the specific pages for the relevant period. A capture shows what a page said on one date; several captures across the period are far more persuasive than one.
• Marketplaces and retailers. Search the mark alone and with the goods, and capture the results pages with the search box visible, including "no results" pages.
• Social media. Review the registrant's accounts across the relevant period and capture posts showing what it actually promoted.
• The specimens themselves. Run reverse image searches on every product photo in the file. A match to an earlier third-party listing, or reuse of the same image in another owner's application, is powerful evidence that the specimen was manufactured; the USPTO's guidance on digitally created or altered specimens is in TMEP § 904.04(a).
• USPTO records. Note the registrant's other filings, specimen refusals, and other registrations cancelled in TMA proceedings. Do not cite a USPTO search for "evidence of use" as evidence of nonuse; those databases record filings, not sales.
• Corporate and regulatory records. State and foreign business registries, dissolution filings, and regulatory databases show whether the registrant could have been selling the goods at all.
• Contact and test purchases. An email asking to buy the goods, a call to a listed number, or an investigator's attempt to place an order can be decisive. Record what was said and what happened, including bounced emails. The test-purchase protocols in Enforcing Trademarks Against Online Sellers and Platforms: A Practical Guide adapt well to nonuse investigations.

If the investigation finds use on any good, stop and reassess. Drop those goods from the petition. A practitioner in an ex parte proceeding must disclose material facts, including adverse ones (37 C.F.R. § 11.303(d)), and the signer certifies under 37 C.F.R. § 11.18 that the factual contentions have evidentiary support.

Step 5: Assemble the evidence and the index

The petition must include "a clear and legible copy of all documentary evidence supporting a prima facie case of nonuse" and "an itemized index of such evidence" (37 C.F.R. § 2.91(c)(9)). Label every exhibit, and give each index entry the exhibit number, a description, the source and URL, the date published or accessed, the goods it supports, and its page count. Web captures must show the URL and the access or print date; articles must show the publication name and date. Include excerpts from the USPTO record, such as the specimen side by side with the earlier third-party image it copies. Leave out anything that does not directly support nonuse. Examiners read hundreds of these petitions, and a tight, well-indexed set of twenty exhibits beats a 400-page export every time.

Step 6: Draft the verified statement

The statement is the spine of the petition. It must be signed by someone with firsthand knowledge and set out in numbered paragraphs (1) the elements of the reasonable investigation, describing for each source how and when the searches were conducted and what they disclosed, and (2) a concise factual statement of the basis for the petition, including any additional facts showing nonuse (37 C.F.R. § 2.91(c)(8)). Use a declaration under 37 C.F.R. § 2.20, which carries the warning that willful false statements are punishable under 18 U.S.C. § 1001. Keep it factual. "The mark has never been used" is a conclusion; "On March 3, 2026, I searched Amazon.com for LUMALOOP alone and with 'lamp,' 'bulb,' and 'light,' and the searches returned no listings for the registrant's goods (Ex. 7)" is evidence. Templates for the log, the index, and the statement are in the Register Clearing Toolkit: Nonuse Investigations, Petition Templates, and Post-Registration Audit Responses.

Step 7: File through TEAS

File the petition on the USPTO's electronic form (37 C.F.R. § 2.91(c)). A complete filing identifies the registration, the basis (expungement or reexamination), each good or service challenged (copied exactly from the registration), the petitioner's name, domicile address, and email, attorney information if represented, the verified statement, the evidence, the index, and the per-class fee under 37 C.F.R. § 2.6(a)(26) ($400 per class when the program launched; confirm the current schedule). A petitioner domiciled outside the United States must designate a U.S. attorney.

Only a complete petition will be considered, and once complete it cannot be amended. If you want anonymity, decide before filing: the real party in interest may file through another person, but the Director may require disclosure of the real party (37 C.F.R. § 2.91(h)), and everything filed becomes public.

Step 8: After filing, wait, monitor, and protect your own position

After a complete petition is filed, the USPTO sends the registrant a courtesy notice, but the registrant cannot respond until a proceeding is instituted (86 Fed. Reg. at 64,303). The Director then decides, good by good, whether you have made a prima facie case, and notifies both sides (37 C.F.R. § 2.92(f)). You cannot appeal a refusal to institute, which is "final and non-reviewable" (15 U.S.C. § 1066a(c)(3); 15 U.S.C. § 1066b(d)(3)). If the proceeding is instituted, it continues between the registrant and the Office; you will see what happens in TSDR, but you will not be asked to reply to anything.

Meanwhile, protect your other interests. The petition does not stay a pending TTAB case or your own office-action deadline (37 C.F.R. § 2.91(g)), so respond on time and request suspension where your application is blocked. If you also have a TTAB case, the Board may suspend it pending the TMA proceeding (TBMP § 510.02(a)), and after Common Sense Press a registrant-favorable outcome will not end it. If the registrant offers to surrender or delete, confirm that it does so formally; after institution, a surrender or amendment must also be reported in a timely response to count (37 C.F.R. § 2.93(d)(2)).

Part two: responding to an institution notice, step by step

Step 1: Read the notice and calendar the deadlines today

The institution notice is an office action under 37 C.F.R. § 2.93(a). Read it for five things: which proceeding it is (expungement or reexamination), which goods or services are at issue (the Director may have instituted on fewer or more than the petition listed), the relevant date in a reexamination, how to access the petition and evidence, and any additional requirements such as a domicile address, electronic filing, or U.S. counsel under 37 C.F.R. §§ 2.189, 2.23, and 2.11.

Then docket. Unless the action says otherwise, the response must be received within three months of the issue date, and that period may be extended once, by one month, on a request filed before the deadline with the fee under 37 C.F.R. § 2.6(a)(27). Failing to respond, or to request the extension in time, ends the proceeding with cancellation of the challenged goods (37 C.F.R. § 2.93(b)(1)). Set internal dates well ahead of the deadline for collecting documents, drafting declarations, and review. Three months disappears quickly when the evidence sits with a distributor overseas.

Three housekeeping checks belong in the first week:

• Correspondence. Confirm that the email address of record reaches someone who reads it. Many registrations are lost because a notice went to a departed employee or a lapsed domain.
• Representation. A registrant domiciled outside the United States must be represented by a U.S.-licensed attorney; an unmet requirement can sink an otherwise good response.
• Parallel matters. Note any pending Section 8 or 71 declaration (deleting goods while one is pending costs a fee), any TTAB case involving the registration, and any litigation where the registration is asserted. A deletion here may have consequences there.

Step 2: Triage the challenged goods

Build a simple matrix: each challenged good or service down the side; across the top, the date that matters, the best evidence available, who holds it, and the decision (defend or delete). The date depends on the proceeding:

• Expungement: evidence that use in commerce occurred before the petition filing date, or before the date a Director-initiated proceeding was instituted (37 C.F.R. § 2.93(b)(5)(i)). Use that began after registration still counts if it preceded the petition (15 U.S.C. § 1066a(g)).
• Reexamination: evidence of use on or before the relevant date for each particular good (37 C.F.R. § 2.93(b)(6)(i)). Later use, however genuine, does not help.

Read the identification exactly as written. If your products do not fit the words, Locus Link says the words win, and no amendment other than deletion is allowed in a response (37 C.F.R. § 2.93(d)). Identify the people who can testify from firsthand knowledge: the person who ran sales, shipped the goods, or rendered the services in the relevant period, not the outside lawyer who prosecuted the application.

Step 3: Gather evidence of use that satisfies the statute, not the specimen rules

The statute frees you from the formal requirements for specimens: your evidence must be "consistent with" the definition of use in commerce in 15 U.S.C. § 1127, "but shall not be limited in form to that of specimens" (15 U.S.C. § 1066a(e); 15 U.S.C. § 1066b(f)). That freedom cuts both ways. You can use business records a specimen could never be, and the examiner will expect them.

Evidence that persuades:

• dated invoices, purchase orders, and shipping records that identify the goods and show the mark;
• distributor agreements together with sell-through or inventory reports;
• e-commerce order exports and point-of-sale reports for the relevant period;
• dated photographs of the goods, packaging, or signage, with an explanation of who took them and when;
• printer or packaging-vendor invoices for labels bearing the mark;
• archived web pages from the relevant period showing the goods offered with a way to buy them;
• for services, proof that services were actually rendered: contracts, completed bookings, client invoices, and records of the work. Advertising alone is not enough (Couture v. Playdom, Inc., 778 F.3d 1379 (Fed. Cir. 2015); Aycock Engineering, Inc. v. Airflite, Inc., 560 F.3d 1350 (Fed. Cir. 2009)).

Evidence that fails:

• the original specimen, resubmitted alone, or a verified statement with nothing behind it; the USPTO's manual says that combination "will likely be insufficient to rebut a prima facie case of nonuse" (TMEP § 1716.04(c));
• undated photos, mockups, renderings, business plans, and "coming soon" pages;
• sales made only to reserve rights, of the kind the Fifth Circuit rejected in Exxon Corp. v. Humble Exploration Co., 695 F.2d 96 (5th Cir. 1983), where a trademark maintenance program generated trivial sales, never more than about $140 a year;
• in a reexamination, anything dated after the relevant date.

Use by a licensee or related company counts if the registrant controls the nature and quality of the goods (15 U.S.C. § 1055), so collect the license and evidence of quality control along with the licensee's sales records. A single genuine sale across state lines can satisfy the commerce requirement, as in Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986 (Fed. Cir. 2016), but the examiner will look harder at a lone sale than at an ordinary business record, and the question is always whether the use was bona fide and in the ordinary course of trade (M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368 (Fed. Cir. 2015)). If the evidence includes confidential business information, you may redact it, and if the examiner needs the unredacted version you may petition to submit it outside the public record (86 Fed. Reg. at 64,313).

Step 4: Decide what to defend and what to delete

For each good, weigh the strength of the evidence against the value of keeping the good in the registration. Two considerations point toward defending: a registrant that proves use earns protection against later TMA challenges to those goods (after an expungement, no further expungement; after a reexamination, no further expungement or reexamination) (37 C.F.R. § 2.92(d)), and goods you assert against infringers are worth the effort. Two point toward deleting: weak evidence invites a final action that reads badly in later litigation, and every hour spent defending a dead product line is an hour not spent on the live ones.

Deletion is clean but final. An acceptable deletion in a response takes effect immediately, nothing can be added back, and no other amendment to the identification is allowed (37 C.F.R. § 2.93(d)(1)). Deleting after a Section 8 or 71 declaration has been filed but before it is accepted triggers a per-class fee (37 C.F.R. § 2.161(c); for Madrid registrations, 37 C.F.R. § 7.37). A surrender of the whole registration or a separate amendment filed outside the response does not count unless you report it in a timely response (37 C.F.R. § 2.93(d)(2)). If you now use the mark on goods you are deleting, consider a new application. It will carry a new filing date, but it will rest on use you can actually prove; see How to File a Trademark Application with the USPTO.

Step 5: Excusable nonuse, if your registration rests on Section 44(e) or 66(a)

In an expungement only, goods whose sole basis is a foreign registration under Section 44(e) or a Madrid extension under Section 66(a) may be defended with "verified statements signed by someone with firsthand knowledge of the facts to be proved and supporting evidence to establish that any nonuse ... is due to special circumstances that excuse such nonuse" (37 C.F.R. § 2.93(b)(5)(ii); 15 U.S.C. § 1066a(f)). The defense is unavailable in reexamination and for Section 1 registrations. The showing must be specific: what prevented use (an embargo, a pending regulatory approval, a supply-chain failure beyond your control), when, what you did to begin use despite it, and when use is expected. Business choices do not qualify, as Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575 (Fed. Cir. 1990) and Rivard v. Linville, 133 F.3d 1446 (Fed. Cir. 1998) show, and a bare averment that you never intended to give up the mark carries little weight. The analogous showing in maintenance filings is described in TMEP § 1604.11.

Step 6: Draft and file the response

A complete response has six parts:

1. A short cover statement identifying the proceeding, the goods at issue, the relevant date, and what the response offers for each good (evidence, excusable nonuse, or deletion).
2. One or more verified statements from people with firsthand knowledge, in numbered paragraphs, stating facts about use and describing each exhibit and how it shows use as of the relevant date (37 C.F.R. § 2.93(b)(7)). A sentence like "we have made bona fide use of the mark" is a legal conclusion; examiners and the Board look past it.
3. Labeled exhibits.
4. An itemized index that makes clear which exhibit supports which good.
5. Any deletions, stated unambiguously, good by good.
6. Compliance with any representation, domicile, or electronic-filing requirement in the action.

The response must be signed by the registrant, someone with legal authority to bind it, or a qualified practitioner, and filed through TEAS; responses by email or fax are not given a filing date (37 C.F.R. § 2.93(b)(3)-(4)). If the examiner treats the response as substantially complete but missing something, such as the URLs and access dates on web printouts, you may be given the longer of 30 days or the remaining response period to cure it (37 C.F.R. § 2.93(b)(2)). Do not rely on that grace; it is discretionary.

Step 7: Read the next action carefully

If the examiner finds that you rebutted the prima facie case and met every requirement, the proceeding terminates with no change to the registration, and the estoppel protects the goods you proved (37 C.F.R. §§ 2.93(c)(3)(i), 2.94). If you missed the deadline, the registration is cancelled as to the challenged goods, and the only path back is a petition to the Director showing extraordinary circumstances (37 C.F.R. § 2.146). If the examiner is not persuaded, a final action issues, and the next section applies.

After the final action: reconsideration, appeal, and review

A final action gives the registrant three months to do one or both of two things: request reconsideration, or appeal to the TTAB (37 C.F.R. § 2.93(c)(1)). A request for reconsideration does not stay or extend the appeal deadline (37 C.F.R. § 2.93(c)(2)(i)). If the problem is an outstanding requirement such as U.S. counsel or a domicile address rather than use, the route is a petition to the Director, and a requirement decided on petition cannot later be appealed (37 C.F.R. § 2.93(c)(2)(ii)).

Sequence matters because the record closes when the appeal is filed: "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)). If you have more evidence, put it in a request for reconsideration filed no later than the notice of appeal. In Locus Link, the registrant filed its appeals and requests for reconsideration with new declarations on the same day, the Board suspended the appeals while the examiner considered the new material, and the appeals resumed after reconsideration was denied.

The appeal itself is taken under 15 U.S.C. § 1070 by a notice of appeal and a per-class fee within three months of the final action (37 C.F.R. §§ 2.141(b)-(c), 2.142(a)(2)); if no fee is paid for at least one class, the proceeding terminates. The appellant's brief is due within 60 days and may not exceed 25 pages; the examiner answers within 60 days, and a reply of up to 10 pages may follow within 20 days (37 C.F.R. § 2.142(b)). An oral hearing must be requested within ten days after the reply brief is due. The Director may reconsider, modify, or set aside the Board's decision (15 U.S.C. § 1070), an authority Congress confirmed while the Appointments Clause challenge later decided in United States v. Arthrex, Inc., 594 U.S. 1 (2021) was pending.

From the Board, the registrant may appeal to the Federal Circuit (15 U.S.C. § 1071(a); 28 U.S.C. § 1295). It may not bring a civil action in district court, the route that in patent cases allows new evidence under Kappos v. Hyatt, 566 U.S. 431 (2012), because § 1071(b)(1) excludes registrants in these proceedings. The Federal Circuit reviews legal conclusions de novo and fact findings for substantial evidence (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)), and whether a mark was in use on a given date is a question of fact. The practical upshot is blunt: the evidence you file in response to the institution notice is, in nearly every case, all the evidence any tribunal will ever see. The petitioner, for its part, has no appeal from anything; it is not a party (Common Sense Press).

Special situations

Director-initiated proceedings. The Director may institute either proceeding without a petition, within the same time windows, on information that supports a prima facie case (15 U.S.C. § 1066a(h); 15 U.S.C. § 1066b(h); 37 C.F.R. § 2.92(b)). The institution notice must include the information behind the decision, and the response steps are identical. The route is most likely where the USPTO's own records raise the question, for example a specimen image reused across unrelated owners' filings.

Multiple petitions and consolidation. The Director may consolidate expungement and reexamination proceedings involving the same registration, and may fold a Director-initiated proceeding into pending petitions (37 C.F.R. § 2.92(e)). A registrant facing consolidated proceedings should build one evidence set organized by good and by date, so that a single declaration answers both the "ever used" and the "used by the relevant date" questions.

Section 44(e) registrations. These registrants could register without using the mark in the United States, so expungement, with its excusable-nonuse defense, is their main exposure from the third anniversary on. Abandonment remains a parallel risk at the Board, where three years of nonuse is prima facie evidence of abandonment under 15 U.S.C. § 1127. Plans to enter the U.S. market should be documented as they happen, because a registrant's after-the-fact testimony carries little weight.

Madrid Protocol registrations. A Section 66(a) extension of protection (15 U.S.C. § 1141f) is subject to expungement, with excusable nonuse available, and its maintenance filing is the Section 71 declaration under 15 U.S.C. § 1141k and 37 C.F.R. § 7.37, which carries the same audit and deletion-fee consequences as a Section 8 declaration. Foreign holders need U.S. counsel to respond.

Collective and certification marks. Both proceedings apply, but the relevant "use" is use by members (collective marks) or by authorized users (certification marks), as defined in 37 C.F.R. § 2.2(k) (37 C.F.R. § 2.92(g)). A certifier's evidence will be its authorized users' sales, not its own.

Supplemental Register registrations. Supplemental registrations are expressly subject to both proceedings (15 U.S.C. § 1094), and remain cancellable at any time through the TTAB under 15 U.S.C. § 1092.

Recent assignments. If the registration changed hands, make sure the assignment is recorded so the Office recognizes the right owner, and collect the predecessor's use evidence as part of the deal; the relevant date in a reexamination usually predates the transfer. See 15 U.S.C. § 1060 and Recording a Trademark Assignment: A Practical Checklist.

Registrations in litigation. A court asked to cancel a registration may do so under 15 U.S.C. § 1119, including on the never-used ground in 15 U.S.C. § 1064(6). A TMA deletion or loss on goods that are asserted in pending litigation will be quoted by the other side, so coordinate the response with litigation counsel before filing anything.

How examiners and the Board actually apply the standards

Institution. In practice, petitions succeed when the investigation is tied to the specific goods and to the relevant period, and fail when they rest on a single current search. The Director may institute on some goods and not others, and may add goods the petition did not list (37 C.F.R. § 2.92(c)(2)). Evidence of current nonuse supports reasonable inferences but does not by itself show nonuse in the past.

Responses. The examiner asks two questions: is this real use in commerce under § 1127, and does it predate the date that matters? Documents generated in the ordinary course of business, at the time, carry the day. Testimony without documents rarely does, and the USPTO has said that testimonial evidence should be supported by documentary evidence (86 Fed. Reg. at 64,304). Earlier acceptance of a specimen is irrelevant, because the registration file was already considered when the proceeding was instituted and prior examination decisions do not bind the Office (In re Nett Designs, Inc., 236 F.3d 1339 (Fed. Cir. 2001)). Identifications are read literally (In re Locus Link USA; see also In re Sones, 590 F.3d 1282 (Fed. Cir. 2009), on identifying goods by their common names).

Burden. The registrant must come forward with evidence, but the USPTO has said that it bears the ultimate burden of showing nonuse by a preponderance of the evidence (86 Fed. Reg. at 64,304). The allocation matters most when the registrant's evidence is real but ambiguous, for example a small number of sales whose documentation is incomplete. Small but genuine sales are use, as the Ninth Circuit held when it reversed a cancellation in Electro Source, LLC v. Brandess-Kalt-Aetna Group, Inc., 458 F.3d 931 (9th Cir. 2006); token sales made to preserve a registration are not.

Fraud is not the question. Neither proceeding asks whether anyone lied. A registrant that overclaimed innocently loses the unused goods just as surely as one that fabricated a specimen. Fraud remains a separate TTAB or court claim requiring proof of a knowing, material misrepresentation made with intent to deceive under In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009), and it can reach maintenance filings (Torres v. Cantine Torresella S.r.l., 808 F.2d 46 (Fed. Cir. 1986)) but not a false Section 15 incontestability declaration (Great Concepts, LLC v. Chutter, Inc., 90 F.4th 1333 (Fed. Cir. 2023)).

Strategy for each side

Petitioners.

• Remember who the estoppel favors. A registrant that survives your petition is protected against every later TMA petition on those goods. Petition only on goods you can document.
• Run two tracks when the stakes justify it. A TMA petition and a TTAB cancellation can proceed together; the Board may suspend its case, and a registrant win at the USPTO does not preclude you at the Board.
• Save your exhibits for the Board. Material filed in the TMA proceeding becomes part of the registration record, but in a later Board case it is subject to the Board's evidentiary rules; capture web evidence in a way a witness can authenticate under Fed. R. Evid. 901.
• Know when to stop. If the registrant answers with genuine sales evidence, a negotiated coexistence or a narrowing deletion may be worth more than a fight you will now lose.

Registrants.

• Fight for what you sell; delete what you do not. Credibility on the goods that matter is worth more than a long identification.
• Expect the next petition. A petitioner that targets one registration often targets the owner's whole portfolio. Audit the rest of your registrations now, and delete unused goods before the next Section 8 filing rather than after it, when deletion triggers a per-class fee.
• Build the use archive you wish you had. For each registration, keep first-sale records, a few invoices and web captures per year, and photographs of goods and packaging with dates. The Trademark Maintenance and Renewal Checklist: A Practical Checklist folds this into the maintenance calendar.

Counsel. The cheapest TMA proceeding is the one that never happens because the statement of use was true. An applicant without genuine use by its deadline should file a new intent-to-use application rather than sign a statement of use it cannot support; see the Trademark Statement of Use Checklist: A Practical Checklist and Intent-to-Use Trademark Applications: A Practical Guide.

Timeline and fees at a glance

Fees. The government fees are set in 37 C.F.R. § 2.6 and change periodically; the USPTO revised its trademark fee schedule in January 2025. The petition fee is per class challenged ($400 per class at launch, under § 2.6(a)(26)); the one-month response extension carries a separate fee (§ 2.6(a)(27)); deleting goods while a Section 8 or 71 declaration is pending carries a per-class fee (§ 2.6(a)(12)); and a TTAB appeal requires a per-class appeal fee. Check the current schedule before filing anything.

Professional costs. For a petitioner, the cost is mostly investigation and drafting time, plus investigator fees for test purchases and translation of foreign records. For a registrant, the cost is mostly document collection and declaration drafting; an appeal adds briefing. Both are a fraction of a contested TTAB cancellation, which involves discovery, testimony, and briefing over a year or more. Elapsed time is measured in months: in Locus Link, the petition was filed in July 2022, the proceedings were instituted in September, the final actions issued in February 2023, and the Board decided the appeals in July 2024.

Worked example: a coffee roaster receives a reexamination notice

The registration. Kestrel Run Roasters, a small Asheville company, filed an intent-to-use application in June 2020 for KESTREL RUN covering coffee (Class 30), café services (Class 43), and mugs (Class 21). The notice of allowance issued on March 1, 2021. After five extensions, the final statement-of-use deadline was March 1, 2024. Kestrel Run filed its statement of use on February 20, 2024, with a photo of a coffee bag, a photo of its coffee cart with KESTREL RUN signage, and a photo of a branded mug. The registration issued on May 21, 2024.

The petition. On September 8, 2025, a competitor petitioned for reexamination of café services and mugs. Its exhibits were archived pages from Kestrel Run's website reading "Café coming summer 2024," an Instagram post from June 2024 announcing that "our café is finally open," and archived web-store pages showing no mugs for sale until September 2024. On October 20, 2025, the Director instituted a reexamination on both items, identifying the relevant date as March 1, 2024. The response was due January 20, 2026.

Step 1: calendar and housekeeping. Kestrel Run's lawyer docketed January 20 and the optional extension to February 20, confirmed that the correspondence email reached the founder, and noted that no Section 8 declaration was pending (so a deletion would carry no deletion fee) and that the registration was not involved in any litigation.

Step 2: triage. Coffee was not challenged. For mugs, the facts were simple and bad: Kestrel Run had ordered 200 mugs in January 2024 and given them away at an open house and to wholesale customers, but sold none until September 2024. Promotional giveaways that advertise the coffee are not sales of mugs as goods in trade (TMEP § 1202.06), and anything after March 1, 2024 is irrelevant in a reexamination. For café services, the storefront opened in June 2024, after the relevant date. But since April 2022, Kestrel Run had run its cart every Saturday at a downtown farmers market under a tent with tables, serving espresso drinks, pastries, and breakfast sandwiches under KESTREL RUN signage.

Step 3: evidence. The founder collected the city mobile-vendor permits for 2022 through 2024, the market's vendor agreements, monthly point-of-sale reports for January and February 2024 showing food and drink sales under the Kestrel Run account, dated photographs of the cart and its signage with an explanation of who took them and when, archived Instagram posts from 2023 showing the cart, and a local newspaper feature from October 2023. The market manager agreed to sign a short declaration confirming the cart's weekly operation and signage. Because the market draws out-of-state visitors and the company sells coffee online across state lines, the commerce element was not in doubt; a single location serving interstate travelers is in commerce under Larry Harmon Pictures Corp. v. Williams Restaurant Corp., 929 F.2d 662 (Fed. Cir. 1991).

Step 4: defend or delete. Mugs were deleted. Kestrel Run filed a new application for mugs based on its actual first sale in September 2024. Café services were defended. Counsel weighed Locus Link: the identification says "café services," and the question is whether a cart with seating serving food and drink renders café services under the mark. The evidence showed exactly that kind of service, rendered to the public, before the deadline, and keeping the services was worth a fight. If the examiner disagreed, Kestrel Run could still delete café services in a timely request for reconsideration rather than appeal, and it already held the unchallenged coffee registration.

Step 5: the response. Filed on January 12, 2026, the response had a two-page cover statement; the founder's declaration in 22 numbered paragraphs, each tied to an exhibit and to the relevant date; the market manager's declaration; 11 labeled exhibits; an index mapping each exhibit to café services; and an unambiguous deletion of "mugs," which removed Class 21.

Step 6: the result. The examiner found that the cart operations showed café services rendered in commerce under the mark before March 1, 2024, and issued a notice of termination. The registration now covers coffee and café services, and no further expungement or reexamination may be instituted against café services (37 C.F.R. § 2.92(d)(2)).

What the petitioner could have done better. Its investigation looked only at the website and social media. A reasonable investigation of café services would have checked where a café operator leaves traces: local permits, market vendor lists, reviews, and local press. Those sources would have shown the cart, and the petitioner could have challenged only the mugs, kept its fee, and avoided handing Kestrel Run statutory protection for its café services.

Common mistakes

Petitioners

• Computing the windows from the application date instead of the registration date.
• Investigating the present instead of the relevant period, or relying on a single search.
• Reconstructing the search log after the fact, so the verified statement cannot say when each search was done.
• Screenshots without URLs and access dates, unlabeled exhibits, or no index.
• Challenging every listed good by default, then watching the registrant prove use on some and gain estoppel.
• Contacting the registrant before an expungement petition and prompting a pre-petition launch.
• Letting your own office-action deadline lapse while the petition is pending.
• Trying to argue likelihood of confusion, genericness, or fraud in a petition that can only address use.

Registrants

• Ignoring the courtesy notice, then missing the institution notice sent to a stale email address.
• Asking for the one-month extension after the deadline has passed.
• Resubmitting the original specimen with a one-paragraph declaration.
• Declarations signed by people without firsthand knowledge, or full of legal conclusions.
• Offering evidence dated after the relevant date in a reexamination.
• Trying to clarify or narrow the identification instead of proving use or deleting.
• Filing a separate surrender or amendment without reporting it in a timely response.
• Filing the appeal before the record is complete.

Frequently asked questions

Can the registrant respond to the courtesy notice it receives when the petition is filed? No. The registrant may not respond until the Director institutes a proceeding (86 Fed. Reg. at 64,303). Use the time to start collecting evidence.

What if four months is not enough time to gather evidence? The one-month extension is the only extension. A timely, bona fide, substantially complete response may earn time to supply an omission, but that is discretionary. Prioritize the goods that matter and file what you have.

Can the petitioner make the proceeding go away if we settle? Not by itself. A complete petition cannot be amended, and once a proceeding is instituted it runs between the registrant and the Office; the petitioner has no role in it. A settlement can include a commitment not to file further challenges, but the registrant must still respond to the office action.

Is our response public? Yes; it becomes part of the registration record. Confidential information may be redacted, with unredacted material submitted by petition if the examiner needs it.

Do we need a lawyer to respond? A U.S.-domiciled registrant may respond through an authorized officer, though the stakes usually justify counsel. A registrant domiciled abroad must be represented by a U.S.-licensed attorney (37 C.F.R. § 2.11).

Can a petition target a pending application? No. Both proceedings apply only to registrations. Against an application, use a letter of protest or an opposition.

If our goods are cancelled, do we lose all rights in the mark? You lose the registration for those goods, not the common-law rights you actually earned through use. But a cancelled registration loses the statutory presumptions and nationwide priority that made it valuable; see Trademark Use and Protection: How Brand Rights Are Born, Built, and Lost.

Can a petitioner that loses try again? If the Director refused to institute, a better-documented petition remains possible, as does a TTAB case. If the proceeding was instituted and the registrant proved use, no later TMA petition may challenge those goods, but the TTAB remains open.

Practical takeaways

• Compute three dates first: the third, fifth, and tenth anniversaries of registration decide which tools exist.
• Investigate the past, not the present. Archived pages, dated records, and the places where real sellers leave traces.
• Log as you go. The verified statement must say how and when every search was done.
• Petition narrowly. A registrant that survives gains estoppel on those goods against everyone.
• For registrants, the response is the trial. Documents from the ordinary course of business, factual declarations, and candid deletions.
• Read the identification literally, and remember that only deletions are allowed.
• Put everything in before you appeal. The record closes at the notice of appeal, and the Federal Circuit reviews the same record.
• Prevention is cheaper. Accurate statements of use, timely deletions before Section 8 filings, and a standing use archive.

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

Related Documents

Related Articles

• Expungement, Reexamination, and Letters of Protest: The Trademark Modernization Act in Practice: the doctrine, the leading decisions, and how the TMA tools compare with cancellation and fraud.
• Trademark Use and Protection: How Brand Rights Are Born, Built, and Lost: what counts as use in commerce, and how rights are lost.
• Intent-to-Use Trademark Applications: A Practical Guide: statement-of-use deadlines and extensions, the dates that drive reexamination.
• Discovery Practice in TTAB Trademark Proceedings: A Comprehensive Guide to Interrogatories, Requests for Production, and Requests for Admissions: when a nonuse fight needs discovery.

Related Guides

• Enforcing Trademarks Against Online Sellers and Platforms: A Practical Guide: marketplace investigation and test-purchase methods.
• Proving Acquired Distinctiveness and Defeating a Genericness Challenge: A Practical Guide: the registrability fights that TMA petitions cannot address.
• Maintaining Trademark Registrations: maintenance filings, audits, and deletions.

Related Checklists

• Trademark Expungement and Reexamination Checklist: A Practical Checklist: the action items in this guide, in checklist form.
• Petitioning to Cancel a Trademark Registration: A Practical Checklist: the Board route for abandonment, fraud, and Section 14(6).
• Identifying Goods and Services and Trademark Classification: A Practical Checklist: drafting identifications that match the business.
• Recording a Trademark Assignment: A Practical Checklist: making sure the right owner receives and answers the notice.
• Trademark Specimen Preparation Checklist: A Practical Checklist: specimens that will survive a later challenge.

Related Toolkits

• Register Clearing Toolkit: Nonuse Investigations, Petition Templates, and Post-Registration Audit Responses: search logs, evidence indexes, verified statements, and response templates.
• TTAB Practice Toolkit: Oppositions, Cancellations, and the Trademark Trial and Appeal Board from Pleading to Appeal: forms and procedure when the dispute moves to the Board.