Register Clearing Toolkit: Nonuse Investigations, Petition Templates, and Post-Registration Audit Responses

Summary. This toolkit collects the working documents for clearing unused registrations from the federal trademark register and for defending a registration when someone tries. For petitioners, it provides a registration fact sheet and window calculator, a tool-selection memo, an investigation plan, a contemporaneous search log, a web-capture protocol, a test-purchase record, a specimen comparison sheet, an evidence index, a verified-statement skeleton, a filing sheet, suspension language, and an optional pre-petition letter, all built around 15 U.S.C. §§ 1066a and 1066b and 37 C.F.R. § 2.91. For registrants, it provides an institution intake and triage matrix, a declaration of use, a response cover statement with deletion language, an excusable-nonuse declaration, and a kit for answering a post-registration audit under 37 C.F.R. § 2.161(b). Each template states its purpose, its owner, and when to use it, and is followed by drafting notes citing the governing statutes, rules, manual sections, and decisions. A pre-filing Section 8 verification worksheet and a letter-of-protest evidence index round out the set for owners and challengers who would rather solve the problem before it becomes a proceeding.

The petition that wins is rarely the one with the most exhibits. It is the one whose search log, exhibits, and declaration agree on every date, so that an examiner can follow it in ten minutes. The registration that survives is the one whose owner can find a 2019 invoice in an afternoon. Register clearing is paperwork in the best sense, and these are the papers.

How to use this toolkit

Each template states its purpose, its owner (the person on the team who should prepare it), and when to use it, then gives the template and short drafting notes. Text in [BRACKETS] is to be filled in. The examples use one invented matter throughout: Brightwater Goods LLC, a Portland accessories company, has been refused registration of its VELOURA mark for handbags because of Registration No. [XXXXXXX] for VELOURA, owned by Harborline Trading Co., Ltd., covering "handbags; wallets; umbrellas" in Class 18. The registration issued on April 9, 2020 from a use-based application filed on August 3, 2019.

The law behind the templates is explained in Expungement, Reexamination, and Letters of Protest: The Trademark Modernization Act in Practice, the sequence of steps is in Filing or Responding to a Trademark Expungement or Reexamination Petition: A Practical Guide, and the action items are collected in the Trademark Expungement and Reexamination Checklist: A Practical Checklist. The templates reflect the statute, rules, and precedential decisions as of March 2025, including the USPTO's January 2025 fee changes.

The short version. Ex parte expungement under 15 U.S.C. § 1066a removes goods or services on which a registered mark has never been used in commerce, on a petition filed after the third and before the tenth anniversary of registration. Ex parte reexamination under 15 U.S.C. § 1066b removes goods or services on which a Section 1 registration's mark was not in use on the relevant date, on a petition filed within five years of registration. A petition must include a verified statement describing a reasonable investigation and an itemized index of evidence (37 C.F.R. § 2.91). An instituted registrant has three months, plus one optional month, to answer with evidence of use, deletions, or (for some foreign-based goods) excusable nonuse (37 C.F.R. § 2.93). Separately, the USPTO audits maintenance declarations and deletes goods the owner cannot support (37 C.F.R. § 2.161(b)). Every template below serves one of those moments.

Template 1: Registration fact sheet and window calculator

Purpose: a one-page record of the facts that decide which tools exist. Owner: the paralegal or associate who pulls the file, checked by the responsible lawyer. When to use: the first day of any matter involving a challenged or challenging registration, on either side.

REGISTRATION FACT SHEET                          Prepared [DATE] by [NAME]
Mark: [VELOURA]                  Reg. No.: [XXXXXXX]     Register: [Principal]
Owner: [Harborline Trading Co., Ltd.]   Domicile: [CITY, COUNTRY]
Attorney of record: [NAME / NONE]       Correspondence email: [ADDRESS]
Class / goods (verbatim) / basis:
  [18] [handbags; wallets; umbrellas]   Basis: [1(a)] Amended basis: [NONE]
Application filed: [2019-08-03]   Registration date: [2020-04-09]
ITU only: NOA [DATE]; extensions [N, DATES]; final SOU deadline [DATE];
          SOU or AAU filed [DATE]
Specimens: original [TSDR DOC, DATE]; post-registration [TSDR DOC, DATE]
Maintenance: Sec. 8/71 window [2025-04-09 to 2026-04-09]; filed? [Y/N, DATE]
Assignments recorded: [NONE / REEL-FRAME]
Prior or pending TMA proceedings: [NONE / NO.]   Litigation/TTAB: [NONE / NO.]
COMPUTED DATES
  3rd anniversary (expungement opens):          [2023-04-09]
  5th anniversary (reexamination closes):       [2025-04-09]
  10th anniversary (expungement closes):        [2030-04-09]
  Relevant date for reexamination, per good:    [2019-08-03, all goods]

Drafting notes. Compute every window from the registration date, not the filing date (37 C.F.R. § 2.91(b)). For a use-based application never amended to Section 1(b), the relevant date for reexamination is the filing date; for an intent-to-use filing it is the date an amendment to allege use was filed or the expiration of the statement-of-use deadline, including approved extensions (37 C.F.R. § 2.91(a)(2)). The fifth anniversary also closes the Board grounds confined to a registration's first five years under 15 U.S.C. § 1064(1), while the never-used ground in 15 U.S.C. § 1064(6) stays open indefinitely after year three. Copy the goods verbatim: the identification controls, as the registrant learned when its "evaporative air coolers" registrations were cancelled because it sold fittings in In re Locus Link USA, Expungement Nos. 2022-100137E & 2022-100138E (T.T.A.B. July 1, 2024) (precedential). In the VELOURA example, the reexamination window closes on April 9, 2025, weeks after the sheet is prepared, which is why Template 2 comes next and not next month.

Template 2: Tool-selection memo

Purpose: a short decision memo that matches each challenged good to the right proceeding. Owner: the responsible lawyer. When to use: after Template 1 and before anyone spends money on an investigation.

TO: [CLIENT]   FROM: [COUNSEL]   RE: Options against Reg. No. [XXXXXXX]
1. Business goal: [clear the path for Application Serial No. ____ ;
   timeline ____ ; budget ____ ]
2. Facts that drive the choice: [Template 1 dates; registrant profile;
   what preliminary searching suggests]
3. Theory by good:
   | Good | Never used? | Not in use on relevant date? | Used, then stopped? |
4. Options:
   | Tool | Fits which goods | Proof needed | Cost | Time | Main risk |
   Letter of protest | Expungement | Reexamination | TTAB: Sec. 14(6),
   abandonment, void ab initio, fraud | Court counterclaim | Negotiation
5. Recommendation and sequence: [e.g., reexamination on all three goods
   by APRIL 9; expungement held in reserve; TTAB only if the registrant
   answers with evidence that needs discovery]
6. Contact strategy: [file first / letter first, and why]
7. Parallel steps: [suspension request in our office-action response]

Drafting notes. Explain the estoppel to the client in one sentence: a registrant that proves use on a good bars later expungement of it, and one that wins a reexamination bars later reexamination by statute and later expungement by rule (15 U.S.C. § 1066a(j); 15 U.S.C. § 1066b(j); 37 C.F.R. § 2.92(d)(2)). Abandonment, use that stopped with intent not to resume, belongs at the Board, where the three-year presumption in 15 U.S.C. § 1127 shifts only the burden of production (Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021 (Fed. Cir. 1989)). Fraud needs a knowing, material misrepresentation made with intent to deceive (In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009)); a knowingly false Section 8 declaration counts (Torres v. Cantine Torresella S.r.l., 808 F.2d 46 (Fed. Cir. 1986)), but a false Section 15 declaration does not support cancellation (Great Concepts, LLC v. Chutter, Inc., 90 F.4th 1333 (Fed. Cir. 2023)). Any Board route requires an entitlement to a statutory cause of action (Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020)), which a blocked applicant like Brightwater has. For the Board mechanics, see Petitioning to Cancel a Trademark Registration: A Practical Checklist.

Template 3: Investigation plan by good and trade channel

Purpose: a plan that aims every search at the right period and the places a real seller would leave traces. Owner: the lawyer, with the person who will sign the verified statement. When to use: before the first search.

Drafting notes. The rule defines a reasonable investigation as "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 ... would normally be found" (37 C.F.R. § 2.91(d)(1)). The source categories in § 2.91(d)(2) are a floor, and a petitioner "need not check all possible appropriate sources" (§ 2.91(d)(3)), but a plan that skips the obvious channel for the goods invites a refusal to institute. Because the question is historical, the USPTO expects archival evidence (86 Fed. Reg. 64,300, 64,302 (Nov. 17, 2021)). For services, add local permits, booking platforms, reviews, and press; for regulated goods, add the public regulatory databases where the product would have to appear. Name the declarant now: the verified statement must come from someone with firsthand knowledge of the searches (37 C.F.R. § 2.91(c)(8)).

Template 4: Contemporaneous search log

Purpose: the record from which the verified statement is written, made as the searches happen. Owner: each searcher; reviewed daily by the declarant. When to use: every search, including the ones that find nothing.

Drafting notes. The verified statement must describe, for each source, "how and when the searches were conducted and what the searches disclosed" (37 C.F.R. § 2.91(c)(8)), and a log written afterward from memory cannot do that. Record failed searches and "no results" pages; absence is the evidence. Never edit an entry after the fact; add a dated correction line instead. If the matter later becomes a Board case or a lawsuit, the searchers will be the witnesses who authenticate the captures under Fed. R. Evid. 901, and the log is how they will remember what they did.

Template 5: Web capture and authentication protocol

Purpose: a standing instruction that makes every web capture usable before the USPTO and, if needed, before the Board or a court. Owner: the lawyer issues it; every searcher follows it. When to use: before the first capture. Registrants should use it too when they collect their own archived pages.

WEB CAPTURE PROTOCOL
1. Capture the full page, including the address bar, as PDF and PNG.
   Show the URL and the access date and time (with time zone) on the face
   of the capture, as 37 C.F.R. 2.91(c)(9)(iii) contemplates.
2. Archived pages: first capture the Wayback Machine calendar for the
   period, then each dated capture. Record the 14-digit timestamp in the
   archive URL (web.archive.org/web/YYYYMMDDhhmmss/...) in the log.
3. Name files [MATTER]-[NNN] in log order. Never overwrite a file.
4. Record a SHA-256 hash of each file in the log and store originals in
   a read-only folder.
5. Note anything that limits the capture (blocked scripts, missing
   images, redirects, geographic restrictions).
6. If the matter may go to the TTAB or court: plan authentication now
   (searcher declarations; a witness or affidavit from the archive; a
   records request to the platform).

Drafting notes. In the ex parte proceeding, a screenshot that shows its URL and access or print date meets the rule. Contested proceedings are stricter. The Seventh Circuit affirmed the exclusion of archive screenshots offered without "authentication by someone with personal knowledge of reliability of the archive service" in Specht v. Google Inc., 747 F.3d 929 (7th Cir. 2014), while the Second Circuit held captures authenticated by testimony from the Internet Archive's office manager about how the archive works in United States v. Gasperini, 894 F.3d 482 (2d Cir. 2018). The framework for electronic evidence generally is laid out in Lorraine v. Markel American Insurance Co., 241 F.R.D. 534 (D. Md. 2007). Further steps are in Authenticating Website Evidence: A Practical Checklist and Capturing the Web: A Practitioner's Guide to Authenticating Website Screenshots as Evidence in Federal Court.

Template 6: Test-purchase and contact record

Purpose: a written instruction to an investigator and a record of each attempt to buy from or contact the registrant. Owner: the lawyer instructs; the investigator completes the record. When to use: when the registrant lists a store, an email address, or a phone number, and especially when the registrant claims a physical or online showroom.

INVESTIGATOR INSTRUCTIONS (attach to engagement letter)
- Act only as an ordinary prospective customer would. Do not claim to be
  a lawyer, a government official, or anyone with authority you lack.
- Do not ask employees about the dispute, the registration, or legal
  matters, and do not try to induce statements. Record what happens in
  the ordinary course of business.
- Do not discuss this matter with the registrant's owners or managers.
  If you learn that the registrant has a lawyer for this dispute, stop
  and call us before any further contact.
- Record contemporaneously; keep all receipts, packaging, and messages.
ATTEMPT RECORD No. [__]
Date/time/zone: [ ]  Investigator: [ ]  Channel: [email/phone/site/store]
Contact point used: [address/number/URL, and where it was listed]
What was said or sent (verbatim or attached): [ ]
Response, if any (verbatim or attached; bounce messages saved): [ ]
Order placed? [Y/N]  Order no. [ ]  Amount and payment method [ ]
Delivered? [Y/N; date; carrier; tracking]  Goods bear the mark? [Y/N; photos]
Chain of custody for any goods: [received by / stored at / sealed on]

Drafting notes. Courts have refused to exclude evidence from, or sanction counsel for, investigators who posed as ordinary customers and recorded a business's normal routine, rather than tricking employees into statements (Gidatex, S.r.L. v. Campaniello Imports, Ltd., 82 F. Supp. 2d 119 (S.D.N.Y. 1999); Apple Corps Ltd. v. International Collectors Society, 15 F. Supp. 2d 456 (D.N.J. 1998)). A practitioner remains responsible for nonpractitioner assistants under the USPTO's professional conduct rules (37 C.F.R. Part 11), so give the instructions in writing. The petition may describe investigator results generally without waiving privilege (86 Fed. Reg. at 64,303). A bounced email or disconnected number is itself evidence; log it. Purchase records built for enforcement programs work here unchanged; see the Online Trademark Enforcement Toolkit: Platform Notices, Test Purchase Records, and Contributory Liability Demands and Enforcing Trademarks Against Online Sellers and Platforms: A Practical Guide.

Template 7: Specimen comparison sheet

Purpose: a side-by-side showing that a specimen was copied or altered. Owner: the searcher who ran the reverse image search. When to use: whenever a specimen image appears elsewhere, in a petition against a registration or a letter of protest against an application.

Drafting notes. State observations, not conclusions: "the two images match in every detail except the tag" is evidence, "the registrant committed fraud" is argument a petition does not need. The USPTO's examination guidance on digitally created or altered specimens is in TMEP § 904.04(a). Against a registration still within five years, a copied specimen filed on the relevant date goes straight to the reexamination question. It may also support a fraud claim at the Board, but only with proof of intent to deceive (In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009)), so treat fraud as a second track, not the first.

Template 8: Itemized evidence index

Purpose: the index the rules require, mapping each exhibit to the goods it supports. Owner: the paralegal, checked by the declarant. When to use: before filing a petition; registrants use the same format for the index a response requires.

Drafting notes. 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)); screenshots must show the URL and access or print date, and articles must be identified by publication and date. A registrant's index must make clear "the particular goods and/or services supported by each item" (37 C.F.R. § 2.93(b)(7)). Cut anything that does not directly support the question for a listed good. Examiners act on indexes they can follow, not on data dumps.

Template 9: Verified statement in support of a petition

Purpose: the sworn spine of the petition. Owner: drafted by counsel from the log; signed by the person who ran or directly supervised the searches. When to use: after the index is final, so that every paragraph can cite an exhibit.

VERIFIED STATEMENT OF [NAME] IN SUPPORT OF PETITION FOR [REEXAMINATION /
EXPUNGEMENT] OF REGISTRATION NO. [XXXXXXX]
1. I am [title] at [firm/company]. I conducted, or directly supervised and
   reviewed, each search described below, and I have firsthand knowledge
   of the facts stated.
2. The registration covers [goods, verbatim] in Class [18]. It issued on
   [2020-04-09] from an application filed under Section 1(a) on
   [2019-08-03], which is the relevant date for reexamination.
THE INVESTIGATION (one paragraph per source)
3. On [date], between [time] and [time] [zone], I searched [source and URL]
   for [exact terms], using [filters]. The searches returned [result].
   True copies of the results pages are Exhibits [__] to [__].
4. [Next source, same format.]
CONCISE STATEMENT OF THE BASIS FOR THE PETITION
[N]. Based on the investigation, I found no evidence that the mark was in
   use in commerce on or in connection with [goods] on or before
   [relevant date]. [Additional facts: the specimen image matches a 2017
   third-party listing (Ex. 4); the registrant's only website was a parked
   page throughout 2019 (Exs. 1-2); emails to the listed address bounced
   (Ex. __).]
[N+1]. I searched for, and did not find, any evidence of use that would
   require omitting a good from this petition.
DECLARATION
The signatory being warned that willful false statements and the like are
punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that
such willful false statements and the like may jeopardize the validity of
the application or submission or any registration resulting therefrom,
declares that all statements made of his/her own knowledge are true and all
statements made on information and belief are believed to be true.
[Signature]  [Name]  [Date]

Drafting notes. The rule requires numbered paragraphs setting out "the elements of the reasonable investigation of nonuse conducted," source by source, and "a concise factual statement of the relevant basis for the petition" (37 C.F.R. § 2.91(c)(8)). The declaration text is the language of 37 C.F.R. § 2.20; the form in 28 U.S.C. § 1746 is an accepted alternative, and either way a willful false statement is punishable under 18 U.S.C. § 1001. Paragraph [N+1] matters: a practitioner in an ex parte proceeding must disclose material adverse facts (37 C.F.R. § 11.303(d)), and the signer certifies under 37 C.F.R. § 11.18 that factual contentions have evidentiary support. The whole petition goes to the registrant and into the public record whether or not a proceeding is instituted (37 C.F.R. § 2.92(f)).

Template 10: Petition filing sheet and fee worksheet

Purpose: a completeness check for the TEAS petition form, because an incomplete petition is not considered and a complete one cannot be amended. Owner: the paralegal who files; signed off by the lawyer. When to use: filing day.

[ ] Registration number; register; registration in force today (TSDR)
[ ] Basis selected for each good: [reexamination: handbags, wallets,
    umbrellas] [expungement: none]
[ ] Each challenged good copied verbatim from the registration
[ ] Classes challenged: [1] x per-class fee [$400 at launch; confirm the
    schedule in force after the January 2025 fee changes] = [$____]
[ ] Petitioner name, domicile address, email; real party in interest
    disclosed or nominee decision documented
[ ] Attorney name, postal address, email, bar information
[ ] Foreign-domiciled petitioner: U.S. attorney designated
[ ] Verified statement signed and dated after the last search
[ ] Exhibits legible, labeled, with URLs and dates; index attached
[ ] Filing receipt and serial or proceeding number saved to the file
[ ] Calendar: TSDR check for institution decision [DATE]

Drafting notes. The required elements are listed in 37 C.F.R. § 2.91(c), and "once complete, [the petition] may not be amended by the petitioner." A foreign-domiciled petitioner must designate a U.S.-licensed attorney (§ 2.91(c)(5)). The Director may require the real party in interest to be identified (§ 2.91(h)). If you plan both proceedings, sequence them: while a reexamination is pending, no later expungement may be instituted for the same goods (37 C.F.R. § 2.92(d)(4)). The fee is charged per class challenged under 37 C.F.R. § 2.6(a)(26).

Template 11: Suspension requests for the blocked applicant

Purpose: language that keeps the petitioner's own application alive while the proceeding runs. Owner: the prosecuting attorney. When to use: in the timely response to the office action that cites the challenged registration, and in any parallel TTAB case.

(A) IN THE OFFICE-ACTION RESPONSE
Applicant responds to the refusal under Section 2(d) as follows. [Merits
arguments, briefly.] In addition, Applicant requests that action on this
application be suspended under 37 C.F.R. 2.67 pending final disposition
of [Reexamination/Expungement] [Petition/Proceeding] No. [____], filed
[date] [and instituted (date)] against cited Registration No. [XXXXXXX]
as to all of the goods on which the refusal is based. The proceeding is
relevant to the continued registrability of the cited mark. Applicant
will advise the Office promptly of any change in its status.
(B) IN A PARALLEL TTAB CASE
[Party] moves to suspend this proceeding pending final disposition of
[Reexamination] Proceeding No. [____], which may be dispositive of the
claims concerning Registration No. [XXXXXXX]. TBMP 510.02(a).

Drafting notes. Filing a petition "will not act as a stay" of a Board case or of any office-action deadline (37 C.F.R. § 2.91(g)), so the response must be timely and complete on the merits. Under 37 C.F.R. § 2.67, a pending Office proceeding relevant to continued registrability is prima facie good cause for suspension, and a suspension request filed within the response period may be treated as responsive, but the examining attorney decides; argue the merits anyway. A registrant win in the TMA proceeding does not preclude the petitioner at the Board (Common Sense Press Inc. v. Van Sciver, Cancellation No. 92075375 (T.T.A.B. May 19, 2023) (precedential)). Response mechanics are in Responding to a Trademark Office Action Checklist: A Practical Checklist.

Template 12: Optional pre-petition letter to the registrant

Purpose: a short, accurate request for a voluntary surrender or deletion. Owner: the responsible lawyer. When to use: only when Template 2 concludes that a letter helps, usually against a real business that may have overclaimed, and almost never against an absent filing mill in an expungement case.

Re: U.S. Registration No. [XXXXXXX] ([MARK])
We represent [CLIENT], which has applied to register [MARK] for [goods].
The USPTO has cited your registration against that application.
Our review of publicly available sources has not located use of your mark
in U.S. commerce for [goods]. If that is correct, we ask that you file a
request to surrender the registration (37 C.F.R. 2.172) or to delete
those goods (37 C.F.R. 2.173) by [date, about 30 days], and send us a copy.
If you have been using the mark on any of these goods in the United
States, please tell us which, and since when, so that we can consider it.
Absent a response, our client will consider the procedures available to
it, including a petition to the USPTO and a petition to cancel.

Drafting notes. Timing depends on the proceeding. In expungement, genuine use that begins before the petition is filed defeats the challenge for those goods (15 U.S.C. § 1066a(g)), so a letter can prompt a last-minute launch. In reexamination the relevant date is already past, and later use does not help the registrant, so a letter costs little. Keep it factual and measured, with no threats of criminal or disciplinary action, and assume it will be an exhibit someday. If the registrant agrees, confirm in TSDR that the surrender or amendment was actually entered. The demand-letter conventions in Drafting a Trademark Cease-and-Desist Letter Checklist: A Practical Checklist apply here with a lighter touch.

Template 13: Institution intake, docket, and triage matrix

Purpose: a one-page control sheet for the registrant's response. Owner: the registrant's lawyer, with a business contact who knows the product lines. When to use: the day the institution notice arrives.

PROCEEDING: [Expungement/Reexamination] No. [____]  Reg. No. [XXXXXXX]
Issue date of action: [DATE]   Relevant date (reexamination): [DATE]
Response due (3 months): [DATE]  Extension request must be received by:
[same DATE]; extended due date (1 month, fee): [DATE]
TSDR status checks (at least every 3 months): [DATES]
Requirements in action: [U.S. counsel / domicile / email / none]
Parallel matters: [Sec. 8 or 71 pending? TTAB? litigation?]
Preservation notice sent: [DATE, recipients]
TRIAGE
| Good (verbatim) | Date that matters | Best evidence | Custodian | Witness |
| Decision: defend / delete / excusable nonuse | Value to business |

Drafting notes. Unless the action says otherwise, the response is due three months from the issue date, and a single one-month extension is available on a request and fee received by that date; miss both and the challenged goods are cancelled (37 C.F.R. § 2.93(b)(1)). Registrants must keep a valid email address and check status at least every three months after institution (37 C.F.R. § 2.23). In an expungement, any qualifying use before the petition date defeats the challenge for that good (15 U.S.C. § 1066a(g)); in a reexamination, only use on or before the relevant date counts. Later sales are no help, just as later sales could not rescue an application filed before any use in Avakoff v. Southern Pacific Co., 765 F.2d 1097 (Fed. Cir. 1985). Use by a licensee counts if the registrant controls quality (15 U.S.C. § 1055), and a registration that changed hands needs the assignment recorded (15 U.S.C. § 1060) and the predecessor's records collected. For holds, use the Litigation Hold and Evidence Preservation Checklist: A Practical Checklist.

Template 14: Registrant's declaration of use

Purpose: the factual declaration that, with its exhibits, is the registrant's trial record. Owner: drafted by counsel; signed by the person who ran sales, shipping, or service delivery during the relevant period. When to use: weeks two to eight after institution, leaving time for review.

DECLARATION OF [NAME] IN SUPPORT OF REGISTRANT'S RESPONSE
1. I am [title] of [registrant]. Since [year] I have been responsible for
   [sales / operations] and have personal knowledge of the facts below.
2. Records. Exhibits [__] are [invoices / order exports / shipping
   records] kept in [system] in the regular course of business, made at
   or near the time of each transaction by people with knowledge of it.
3. The mark appears on the goods as follows: [hang tag sewn into each
   handbag; printed on wallet packaging] (photographs, Exs. [__], taken by
   [name] on [date]; dated by [file metadata / dated packaging run]).
FOR EACH GOOD
4. [Handbags.] The first sale in U.S. commerce under the mark was on
   [date] to [customer type] in [state], shipped from [state] (Ex. [__]).
   Between [date] and [relevant date], registrant sold [number] units to
   [number] customers in [number] states (summary, Ex. [__]; sample
   invoices, Exs. [__]).
5. [Next good, same format. Services: dates rendered, clients served,
   where, under what signage or materials.]
6. [If a licensee made sales: license date; quality-control steps and
   records (Ex. [__]).]
[Declaration language under 37 C.F.R. 2.20 or 28 U.S.C. 1746]

Drafting notes. Evidence must be consistent with the statutory definition of use but "shall not be limited in form to that of specimens" (15 U.S.C. § 1066a(e); 15 U.S.C. § 1066b(f)), and the declaration must set out "factual information about the use of the mark in commerce, including a description of the supporting evidence and how the evidence demonstrates use" as of the relevant date (37 C.F.R. § 2.93(b)(7)). The USPTO's manual warns that the old specimen or a verified statement alone "will likely be insufficient" (TMEP § 1716.04(c)), and the Office has said testimony should be backed by documents (86 Fed. Reg. at 64,304). Testimony riddled with uncertainty about dates failed to prove use in Powermatics, Inc. v. Globe Roofing Products Co., 341 F.2d 127 (C.C.P.A. 1965).

Small but genuine sales count; two hats sold to an out-of-state buyer sufficed in Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986 (Fed. Cir. 2016). Sales staged to keep a registration alive do not, because use "made merely to reserve a right in a mark" is excluded by 15 U.S.C. § 1127; see Social Technologies LLC v. Apple Inc., 4 F.4th 811 (9th Cir. 2021) and Exxon Corp. v. Humble Exploration Co., 695 F.2d 96 (5th Cir. 1983). For services, the services must have been rendered, not just advertised (Couture v. Playdom, Inc., 778 F.3d 1379 (Fed. Cir. 2015)); for goods, items that exist only to support another business are not goods in trade, as the software in Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376 (Fed. Cir. 2012) was not, and promotional giveaways usually fail the same test (TMEP § 1202.06).

Paragraph 2 follows the business-records foundation in Fed. R. Evid. 803, and the sales summary follows the logic of Fed. R. Evid. 1006; neither rule governs the ex parte proceeding, but both will matter if the fight moves to the Board or a court. Write facts, never "we have made bona fide use."

Template 15: Response cover statement with deletions

Purpose: the document that tells the examiner, good by good, what the response does. Owner: the registrant's lawyer. When to use: filing day, on top of Templates 8 and 14.

RESPONSE TO OFFICE ACTION ISSUED [DATE]
[Expungement/Reexamination] Proceeding No. [____]; Reg. No. [XXXXXXX]
1. Goods for which registrant submits evidence of use [on or before the
   relevant date of (DATE) / before the petition filing date of (DATE)]:
   [handbags; wallets]. See Declaration of [NAME] and Exhibits [1-18],
   indexed in Attachment A.
2. Deletion. Registrant deletes the following goods from Class [18]:
   "[umbrellas]". The identification as amended reads: "[handbags;
   wallets]".
3. Requirements. [U.S. counsel appearance filed (date) / domicile address
   provided / email address of record updated.]
4. Registrant requests termination of the proceeding as to the goods in
   paragraph 1.
[Signature of registrant, authorized officer, or qualified practitioner]

Drafting notes. A response may offer evidence of use, deletion, and (in expungement, for Section 44(e) or 66(a) goods) excusable nonuse (37 C.F.R. § 2.93(b)(5)-(6)). Deletions take effect immediately, cannot be undone, and are the only amendment allowed; a surrender or amendment filed separately counts only if reported in a timely response (37 C.F.R. § 2.93(d)). Do not try to reinterpret the identification; the registrant in Locus Link argued that its fittings fit "components for air conditioning and cooling systems, namely, evaporative air coolers" and lost both registrations. If a Section 8 or 71 declaration is pending, a deletion carries a per-class fee (37 C.F.R. § 2.161(c)). File through TEAS with a proper signature; email and fax filings get no filing date (37 C.F.R. § 2.93(b)(3)-(4)). Proving use on a good earns the statutory estoppel against later petitions for it (37 C.F.R. § 2.92(d)).

Template 16: Excusable nonuse declaration (Section 44(e) and 66(a) goods only)

Purpose: the showing that nonuse of foreign-based goods is excused by special circumstances. Owner: counsel, with the registrant's executive responsible for U.S. market entry. When to use: only in an expungement, and only for goods whose sole basis is Section 44(e) or 66(a).

1. Basis. The goods [list] rest solely on [Section 44(e), foreign Reg. No.
   ____ / Section 66(a), International Reg. No. ____].
2. The circumstance. Beginning [date], [describe the obstacle outside the
   registrant's control: import ban, pending product approval by (agency),
   loss of the only licensed manufacturer], which prevented sales in the
   United States because [explain] (Exs. [__]).
3. Efforts despite it. On [dates], registrant [applied for approval /
   contracted with a U.S. distributor / ordered compliant packaging]
   (Exs. [__]).
4. Expected use. Registrant expects to begin U.S. sales by [date] because
   [concrete reason] (Exs. [__]).
5. Registrant has not abandoned the mark and intends to use it as soon as
   the circumstance ends.

Drafting notes. The defense comes from 15 U.S.C. § 1066a(f) and 37 C.F.R. § 2.93(b)(5)(ii), which require verified statements from someone with firsthand knowledge "and supporting evidence." It is not available in reexamination or for Section 1 goods. The cases on special circumstances are unforgiving about business choices: a decision not to launch in the U.S. market did not excuse nonuse in Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575 (Fed. Cir. 1990), and the registrant in Rivard v. Linville, 133 F.3d 1446 (Fed. Cir. 1998) needed evidence of steps a reasonable business would take, not a bare averment that it never meant to abandon the mark. Paragraph 5 alone proves nothing; paragraphs 2 through 4, with dated documents, carry the defense. The analogous Section 8 showing is described in TMEP § 1604.11, and the registration bases are in 15 U.S.C. § 1126 and 15 U.S.C. § 1141f.

Template 17: Post-registration audit response kit

Purpose: a fast, candid answer to a USPTO audit of a Section 8 or Section 71 declaration. Owner: the maintenance docketing lawyer, with the client's product manager. When to use: the day an audit office action arrives.

(A) INTAKE
Action date: [ ]  Deadline stated in action: [ ]  Audited classes: [ ]
Items the Office selected, per class: [item 1] [item 2]
| Item | Still in use when declaration was signed? | Proof available |
| Specimen type | Date shown | Decision: prove / delete |
(B) RESPONSE TEXT
In response to the Office action dated [ ], the owner submits the
following proof of use of the mark in commerce:
  Class [ ]: [item 1]: [description of specimen or other proof], Ex. [ ].
            [item 2]: [description], Ex. [ ].
[Deletion, if any:] The owner deletes the following goods from Class [ ]:
"[verbatim]". The per-class deletion fee is enclosed.
The owner confirms that the mark is in use in commerce on all goods that
remain in the registration. [Verified statement under 37 C.F.R. 2.20.]

Drafting notes. The audit authority is 37 C.F.R. § 2.161(b), which lets the Office require "such information, exhibits, affidavits or declarations, and such additional specimens as may be reasonably necessary" to examine the declaration "or for the Office to assess and promote the accuracy and integrity of the register"; Madrid registrations follow 37 C.F.R. § 7.37. A registration is eligible for audit if the declaration lists at least one class with four or more items, or two classes with two or more each, and the audit asks for proof on two additional items per audited class; deleting audited items while others remain draws a second office action. 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, 420 (2020).

Calendar the deadline the action states; under 37 C.F.R. § 2.163, silence cancels the registration. Proof is usually specimens, which must meet 37 C.F.R. § 2.56: a web page for goods must be a point of sale, and a page that only invited buyers to call for "sales information" failed in In re Siny Corp., 920 F.3d 1331 (Fed. Cir. 2019), though no picture of the goods is required (In re Sones, 590 F.3d 1282 (Fed. Cir. 2009)). Deletions after the declaration is filed carry a per-class fee (37 C.F.R. § 2.161(c)).

Be candid. The USPTO reported in 2019 that more than half of audited owners deleted goods they had recently sworn were in use, and said it may refer attorneys who sign plainly overbroad declarations to its Office of Enrollment and Discipline (Practical Law, Expert Q&A: Trademark Commissioner Discusses Changes at the USPTO (Aug. 15, 2019)). A knowingly false maintenance declaration can support cancellation for fraud (Torres v. Cantine Torresella S.r.l., 808 F.2d 46 (Fed. Cir. 1986)). For the declaration itself, see Section 8 Declaration of Continued Use: A Practical Checklist.

Template 18: Pre-filing Section 8 verification worksheet and use archive

Purpose: the reasonable inquiry that makes a maintenance declaration true when signed, plus the archive that answers any later challenge. Owner: the maintenance lawyer and the client's brand manager. When to use: every Section 8, Section 71, and renewal cycle, and once a year for the archive.

SECTION 8 VERIFICATION (one row per listed item)
| Item (verbatim) | Sold under the mark in the last 12 months? | Proof
  (invoice no., date) | Specimen chosen | Keep / delete before filing |
  Confirmed by [name, title, date] |
Deletions to file before the declaration: [items] (Section 7 request)
Signer's inquiry: I reviewed the rows above with [names] on [date].
ANNUAL USE ARCHIVE (per registration, per item)
[ ] Three dated invoices from different months   [ ] One web capture
[ ] Dated photo of goods and packaging           [ ] Licensee reports
[ ] Note of any item discontinued, with date and reason

Drafting notes. The declaration under 15 U.S.C. § 1058 (or 15 U.S.C. § 1141k for Madrid registrations) is a sworn statement, and the signer certifies under 37 C.F.R. § 11.18 that it rests on an inquiry reasonable under the circumstances. Deleting unused items before filing avoids the post-filing deletion fee (TMEP § 1609.03), and an identification may later be restricted but never broadened (37 C.F.R. § 2.173(e)). The archive is cheap insurance against the expungement petition that arrives years later, when the people who made the first sales have moved on. The maintenance calendar is in the Trademark Maintenance and Renewal Checklist: A Practical Checklist, and specimen standards are in the Trademark Specimen Preparation Checklist: A Practical Checklist.

Template 19: Letter of protest evidence index

Purpose: the index for a letter of protest, which stops a bad application before it registers. Owner: the attorney monitoring the applicant's filings. When to use: before publication if possible, and no later than 30 days after publication.

Drafting notes. The protest is filed through TEAS with the fee in 37 C.F.R. § 2.6(a)(25), and the index may not identify the protestor or contain legal argument (37 C.F.R. § 2.149(f)). Evidence is capped at 10 items per ground and 75 pages in total unless special circumstances are explained. Before publication, evidence need only be relevant to a ground for refusal; on or within 30 days after publication, it must establish a prima facie case (37 C.F.R. § 2.149(c)-(d)). The Director decides within two months whether to include the evidence, and that decision is final and non-reviewable (15 U.S.C. § 1051(f)). Proper grounds are those an examining attorney could raise on her own (TMEP § 1715.01(a)); prior common-law rights and fraud belong in an opposition (TMEP § 1715.01(b)). A protest does not stay or extend the time to oppose under 15 U.S.C. § 1063 (37 C.F.R. § 2.149(e)), so request an extension of time to oppose if you may need one; see Filing a TTAB Notice of Opposition: A Practical Checklist.

Common drafting mistakes

• A verified statement that says "never used" without saying how anyone knows. Every conclusion should trace to a dated search and an exhibit.
• Dates that do not match. The log, the exhibit captures, and the statement must agree; one mismatched date invites doubt about all of them.
• Searching the present for a historical question. A current search supports an inference; captures from the relevant period prove the point.
• A registrant declaration from the outside lawyer. Declarants need firsthand knowledge of the sales or services.
• Recycled specimens. The specimen already in the file is the reason the proceeding was instituted, not the answer to it.
• Deletions buried in argument. State them in a numbered paragraph, verbatim, with the amended identification.
• Audit answers that prove the wrong items. Prove the items the Office selected, not the ones easiest to document.

Frequently asked questions

Can a business use these templates and file without a lawyer? A U.S.-domiciled petitioner may file on its own behalf, and a foreign-domiciled petitioner must designate a U.S.-licensed attorney (37 C.F.R. § 2.91(c)(5)). The verified statement is sworn evidence either way, so whoever signs should have run the searches.

Should the registrant answer the courtesy notice it receives when a petition is filed? No response is possible until the Director institutes a proceeding (86 Fed. Reg. at 64,303). Start Templates 13 and 14 anyway; four months is not long.

What happens to these papers if the dispute moves to the TTAB? The registration file, including the petition and any response, becomes part of the record of a cancellation against that registration, but the truth of what those papers say must be proved under the Federal Rules of Evidence, and declarations in the file are not testimony on the registrant's behalf (37 C.F.R. § 2.122(b)). That is why Templates 4 and 5 are built for authentication. For the Board stage, see the TTAB Practice Toolkit: Oppositions, Cancellations, and the Trademark Trial and Appeal Board from Pleading to Appeal.

Do the fees in these templates stay current? No. The USPTO revised its trademark fee schedule in January 2025, and fees change periodically. The templates cite the fee provisions in 37 C.F.R. § 2.6 so that the amount can be confirmed on filing day.

Practical takeaways

• Start with Template 1. The registration date decides which tools exist, and windows close without notice.
• Log first, capture carefully, write last. A verified statement drafted from a contemporaneous log rarely contradicts its exhibits.
• Petition only on goods you can document. A registrant that proves use on a good is protected from later petitions on it.
• For registrants, documents beat adjectives. Invoices, shipping records, and dated photographs, explained by someone who was there.
• Delete early and cleanly. Before a Section 8 filing it is free and quiet; in a proceeding it is final; after an audit it costs a fee.
• Treat audits as a preview. An owner that cannot pass an audit will not survive a petition.

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 statute, the rules, and the leading decisions behind every template here.
• Trademark Use and Protection: How Brand Rights Are Born, Built, and Lost: what counts as use in commerce, and how rights are lost.
• Capturing the Web: A Practitioner's Guide to Authenticating Website Screenshots as Evidence in Federal Court: the authentication law behind Template 5.

Related Guides

• Filing or Responding to a Trademark Expungement or Reexamination Petition: A Practical Guide: when and in what order to use each template, with a worked example.
• Enforcing Trademarks Against Online Sellers and Platforms: A Practical Guide: marketplace investigations that feed Templates 4 and 6.
• Maintaining Trademark Registrations: the maintenance filings that audits test.

Related Checklists

• Trademark Expungement and Reexamination Checklist: A Practical Checklist: the action items these templates carry out.
• Authenticating Website Evidence: A Practical Checklist: capture and foundation steps for web evidence.
• Petitioning to Cancel a Trademark Registration: A Practical Checklist: the contested route when a petition is not enough.
• Section 8 Declaration of Continued Use: A Practical Checklist: filing maintenance declarations that survive audits.
• Trademark License and Quality Control Checklist: A Practical Checklist: making licensee sales count as the registrant's use.

Related Toolkits

• Online Trademark Enforcement Toolkit: Platform Notices, Test Purchase Records, and Contributory Liability Demands: purchase records and platform evidence that double as nonuse proof.
• TTAB Practice Toolkit: Oppositions, Cancellations, and the Trademark Trial and Appeal Board from Pleading to Appeal: pleadings, discovery, and trial when the dispute becomes contested.
• Trademark Registration Toolkit: A Roadmap from Brand Idea to Federal Registration and Maintenance: filing accurately in the first place, which is the best defense to everything above.