Trademark Expungement and Reexamination Checklist: A Practical Checklist

Summary. This checklist turns the Trademark Modernization Act's ex parte expungement and reexamination procedures into concrete action items for both sides of a proceeding. Petitioners get items for computing the filing windows, choosing among a petition, a letter of protest, and a TTAB cancellation, planning and logging a reasonable investigation, and assembling the verified statement, evidence index, and TEAS filing that 37 C.F.R. § 2.91 requires. Registrants get items for reading and docketing an institution notice, triaging each challenged good or service, building evidence of use that satisfies 15 U.S.C. § 1127, deciding what to defend and what to delete, and preserving the record for reconsideration, a TTAB appeal, and Federal Circuit review. Short notes under each group explain the rule behind the items and cite the statute, regulation, manual section, or decision that controls. Later parts cover Director-initiated proceedings, post-registration audits, portfolio hygiene for registrants who would rather never see a petition, common mistakes, a short FAQ, and practical takeaways.

A blocked applicant has three months to answer an office action that cites a registration nobody seems to use. A registrant has three months to prove that it was selling goods on a date that may be four years gone. Both deadlines reward the same habit: doing the right tasks in the right order and writing them down while doing them. This checklist is that order, for both sides of the file.

How to use this checklist

Part 1 applies to everyone. Parts 2 through 6 are for petitioners and the businesses that hire them. Parts 7 through 12 are for registrants who have received an institution notice. Part 13 covers proceedings the USPTO starts on its own and the post-registration audit program, Part 14 covers the habits that keep a registration out of trouble, and Part 15 covers letters of protest, the cheapest tool of all because it works before a bad mark registers. Each item is phrased as an action. The notes after each group explain why the items matter and cite the authority behind them.

The short version. Ex parte expungement (15 U.S.C. § 1066a) cancels goods or services on which a registered mark has never been used in commerce; a petition may be filed after the third and before the tenth anniversary of registration. Ex parte reexamination (15 U.S.C. § 1066b) cancels goods or services on which a mark registered under Section 1 was not in use on the relevant date; a petition may be filed within five years of registration. Anyone may petition, but the petition must describe a reasonable investigation in a verified statement and attach indexed evidence (37 C.F.R. § 2.91). If the Director institutes a proceeding, the petitioner steps out and the registrant has three months, plus one optional month, to prove use, delete goods, or (in limited cases) show excusable nonuse. The registrant's response is effectively the trial record. The doctrine is explained in Expungement, Reexamination, and Letters of Protest: The Trademark Modernization Act in Practice, and the same steps are told as a narrative, with worked examples, in Filing or Responding to a Trademark Expungement or Reexamination Petition: A Practical Guide. Fill-in templates for the logs, indexes, statements, and responses referred to below are in the Register Clearing Toolkit: Nonuse Investigations, Petition Templates, and Post-Registration Audit Responses.

Part 1: For both sides, pull the file and compute the dates

• Download the complete registration record from TSDR, including the prosecution history and every document, not just the status page. Save it with the download date in the file name.
• Record the register and the filing basis of each class (Section 1(a), 1(b), 44(e), or 66(a)), including any amendment of basis during prosecution. Reexamination reaches only Section 1 registrations; expungement reaches every basis and the Supplemental Register (37 C.F.R. § 2.91(a); 15 U.S.C. § 1094).
• For an intent-to-use registration, list the notice of allowance date, every extension, the final statement-of-use deadline, and the date the statement of use or amendment to allege use was filed. These dates fix the relevant date in a reexamination.
• Collect every specimen in the file, original and post-registration, and every office action that questioned a specimen.
• Note the owner, its domicile, its attorney of record, and the correspondence email. A foreign-domiciled registrant must be represented by a U.S.-licensed attorney (37 C.F.R. § 2.11).
• Check the assignment records and note any transfer since filing (15 U.S.C. § 1060).
• Search for earlier or pending expungement and reexamination proceedings against the same registration, using the USPTO's decisions and proceedings search tool and the TSDR file. Some outcomes bar later proceedings for the same goods (37 C.F.R. § 2.92(d)).
• Compute the third, fifth, and tenth anniversaries of registration and write them at the top of the file.
• Confirm that the registration is still in force and whether a Section 8 or Section 71 declaration is due, pending, or overdue (15 U.S.C. § 1058; 15 U.S.C. § 1141k). A petition must be filed while the registration is in force (37 C.F.R. § 2.91(b)), and a registration about to lapse for a missed maintenance filing may not be worth a petition.
• List every TTAB case and lawsuit that involves the registration. A court can order cancellation under 15 U.S.C. § 1119, and what either side says in a TMA proceeding may be quoted there.

Why it matters. The three anniversaries decide which tools exist. The third opens expungement. The fifth closes reexamination, and on the same day the Board grounds confined to a registration's first five years by 15 U.S.C. § 1064(1) expire, among them likelihood of confusion and the void-from-the-start theory for a use-based filing that preceded any use. The tenth closes expungement for petitions filed after December 27, 2023 (37 C.F.R. § 2.91(b)(1)). After that, a never-used registration can still be cancelled under the Section 14(6) ground added by the TMA, which is available "[a]t any time after the 3-year period following the date of registration," but only in a contested TTAB or court case (15 U.S.C. § 1064(6)).

A date example. Suppose a notice of allowance issued on February 1, 2021, the owner obtained all five six-month extensions, so its last deadline was February 1, 2024, and it filed a statement of use on November 15, 2023, during the fifth extension. The registration issued on March 5, 2024. Reexamination is available through March 5, 2029, and the relevant date is February 1, 2024, the expiration of the deadline, not the November filing date (37 C.F.R. § 2.91(a)(2)). Expungement becomes available once three years have passed (March 2027) and closes ten years after registration (March 2034). The first Section 8 declaration cannot be filed before March 5, 2029, so a petitioner who waits to see whether the owner will swear to continued use has, for practical purposes, waited out the reexamination window.

Part 2: Petitioners, choose the right tool

• If the mark is still a pending application, stop here and go to Part 15. A letter of protest or an opposition under 15 U.S.C. § 1063 is the right tool; expungement and reexamination apply only to registrations.
• Use expungement for goods on which the mark appears never to have been used, in registrations between three and ten years old, on any filing basis (15 U.S.C. § 1066a(a), (i)).
• Use reexamination for goods in a Section 1 registration less than five years old on which the mark was not in use on the relevant date (15 U.S.C. § 1066b(a)-(b), (i)). It is usually the easier case, because it turns on a single date and the registrant's own specimen from that date is often the best evidence.
• Use the TTAB, not a petition, when the mark was used and then dropped. That is abandonment: use "discontinued with intent not to resume," with three consecutive years of nonuse as prima facie evidence (15 U.S.C. § 1127). That presumption shifts only the burden of production (Cerveceria Centroamericana, S.A. v. Cerveceria India, Inc., 892 F.2d 1021 (Fed. Cir. 1989)), and intent usually lives in files only discovery reaches.
• Use the TTAB when the proof depends on private records, for example a registrant that claims sales to a handful of distributors the public record cannot confirm or refute.
• Use the TTAB when other grounds matter. A TMA petition addresses use and nothing else: not likelihood of confusion, descriptiveness, genericness, or fraud. For registrability fights, see Genericness, Genericide, and Acquired Distinctiveness: Where Trademark Protection Begins and Ends.
• Reserve fraud for cases with documentary proof of a deliberate lie. Fraud requires a knowingly false, material representation made with intent to deceive, proven by clear and convincing evidence (In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009)). A knowingly false Section 8 declaration can support cancellation (Torres v. Cantine Torresella S.r.l., 808 F.2d 46 (Fed. Cir. 1986)); a false Section 15 incontestability declaration cannot (Great Concepts, LLC v. Chutter, Inc., 90 F.4th 1333 (Fed. Cir. 2023)).
• If you may need the TTAB, confirm your entitlement to a statutory cause of action now. A petition requires none, but a Board case requires an interest within the zone of interests and damage proximately caused by the registration (Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020), applying Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014)); a consumer failed that test in Curtin v. United Trademark Holdings, Inc., 137 F.4th 1359 (Fed. Cir. 2025). A blocked applicant ordinarily passes it.
• Decide whether to contact the registrant first. In expungement, genuine use that begins after registration but before the petition is filed defeats the challenge for those goods (15 U.S.C. § 1066a(g)). Against an absent filing mill, file first. Against a real business that may simply have overclaimed, a short letter can produce a voluntary deletion and save everyone the proceeding.
• Decide whether the real party in interest will be named. It may file through another person, but the Director may require disclosure (37 C.F.R. § 2.91(h)), and everything filed becomes public.
• Budget the matter. The government fee is charged per class challenged ($400 per class when the procedure launched, under 37 C.F.R. § 2.6(a)(26); the USPTO revised its trademark fee schedule in January 2025, so confirm the current amount). Add investigation time, any investigator or translation costs, and the months your own application may sit in suspension.

Why it matters. The choice of tool is also a choice about estoppel. A registrant that survives an instituted expungement on particular goods is protected from later expungement of those goods by anyone, and one that survives a reexamination is protected from both proceedings for those goods (15 U.S.C. § 1066a(j); 15 U.S.C. § 1066b(j); 37 C.F.R. § 2.92(d)). A weak petition does not just fail; it can immunize the goods it targeted. The TTAB route is described in Petitioning to Cancel a Trademark Registration: A Practical Checklist.

Part 3: Petitioners, plan the investigation

• Write the question for each challenged good in one line. Expungement: was the mark ever used on this item, at any time before the petition? Reexamination: was it in use on this item on or before the relevant date?
• Fix the search period for each question. For expungement, from the earliest claimed use to the present. For reexamination, the months before the relevant date, plus enough of the period afterward to show when the mark actually appeared, if it ever did.
• Read the identification literally, word by word. Words after "namely" define the goods. In In re Locus Link USA, Expungement Nos. 2022-100137E & 2022-100138E (T.T.A.B. July 1, 2024) (precedential), the registrant sold refrigerant fittings under a registration for "evaporative air coolers," and both registrations were cancelled. Goods the registrant really sells may not be the goods it registered.
• Map where a real seller of each item would leave traces. Consumer products leave marketplace listings, retailer pages, reviews, and social posts. Industrial goods leave distributor catalogs, spec sheets, and trade-show exhibitor lists. Services leave a location, permits or licenses, booking pages, and local press. Regulated goods leave public regulatory records, such as federal label approvals for alcoholic beverages or equipment authorizations for radio devices, whose absence is hard to explain away.
• Treat the source list in 37 C.F.R. § 2.91(d)(2) as a floor, not a ceiling. You "need not check all possible appropriate sources" (§ 2.91(d)(3)), but check the ones a skeptical examiner would expect for these goods.
• Choose the declarant before the first search. The verified statement must be signed by someone with firsthand knowledge of how and when each search was done (37 C.F.R. § 2.91(c)(8)), so the person running the searches, or directly supervising and reviewing them, should sign.
• Decide whether to use an investigator, and brief the investigator in writing. Courts have declined to exclude evidence from, or sanction counsel for, investigators who posed as ordinary customers and recorded the target's normal business 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)). The petition may describe the results generally without waiving privilege (86 Fed. Reg. 64,300, 64,303 (Nov. 17, 2021)).

Why it matters. The question is historical. Evidence that a mark is not in use today supports an inference about the past but does not prove it, and the USPTO's rulemaking expressly contemplates archival evidence for that reason (86 Fed. Reg. at 64,302). Practitioner guidance drawn from the first years of the program reports that examiners often decline petitions built on limited or incomplete internet searches. Marketplace and test-purchase methods built for enforcement transfer directly; see Enforcing Trademarks Against Online Sellers and Platforms: A Practical Guide.

Part 4: Petitioners, run the investigation and log it as you go

• Open a search log before the first search with columns for date and time, searcher, source, exact search terms, filters, result, and the file name of each capture.
• Work through archived web pages period by period. Use the Wayback Machine's calendar view to show which dates were captured, then save the captures for the relevant period. Several captures across the period persuade far more than one.
• Search each marketplace and retailer for the mark alone and with each good, and save the results pages with the search box and the date visible, including pages that return nothing.
• Review the registrant's own websites and social accounts across the whole period and capture what they actually promoted.
• Run a reverse image search on every product photo in the specimens. A match to an earlier third-party listing, or reuse of the same image in an unrelated owner's application, is strong evidence of a manufactured specimen; the USPTO's examination guidance on digitally created or altered specimens is TMEP § 904.04(a).
• Review the registrant's other USPTO filings for specimen refusals and for registrations already cancelled in TMA proceedings. Do not present a USPTO database search as evidence of nonuse; those records show filings, not sales.
• Pull corporate and regulatory records: state and foreign business registries, dissolution and good-standing records, and any regulatory database where the goods would have to appear.
• Try to buy, or at least to ask. Email the address on the specimen or website, call the listed number, or have an investigator attempt an order. Record what happened, including bounced emails and disconnected numbers.
• Capture evidence so a witness could authenticate it later. Keep native files, the URL and date on every page, and the log itself. If the dispute moves to the Board or a court, archive captures may need a witness who knows how the archive works: unauthenticated captures were excluded in Specht v. Google Inc., 747 F.3d 929 (7th Cir. 2014), and an Internet Archive witness sufficed in United States v. Gasperini, 894 F.3d 482 (2d Cir. 2018). See Fed. R. Evid. 901 and Authenticating Website Evidence: A Practical Checklist.
• If you find evidence of use on any good, stop and drop that good. A practitioner in an ex parte proceeding must disclose material facts, including adverse ones (37 C.F.R. § 11.303(d)), and a signer certifies that factual contentions have evidentiary support (37 C.F.R. § 11.18).

Why it matters. The verified statement must say, for each source, how and when the searches were conducted and what they disclosed (37 C.F.R. § 2.91(c)(8)). A log reconstructed from memory after the fact is the most common weakness in petitions, and it is the first thing a later opponent will attack.

Part 5: Petitioners, assemble the evidence index and the verified statement

• Label every exhibit and build an itemized index giving, for each, the exhibit number, a description, the source and URL, the date published or accessed, the goods it supports, and the page count (37 C.F.R. § 2.91(c)(9)).
• Use legible, full-page captures that show the URL and the access or print date; identify articles by publication and date.
• Show the specimen side by side with any earlier image it copies, using excerpts from the USPTO record.
• Cut everything that does not directly support nonuse. A tight set of twenty indexed exhibits beats a data dump, and examiners read many of these.
• Draft the verified statement in numbered paragraphs: first the elements of the investigation, source by source; then a concise factual statement of the basis for the petition, including any other facts showing nonuse (37 C.F.R. § 2.91(c)(8)).
• State facts, not conclusions. "The mark has never been used" is a conclusion. "On March 3, I searched Amazon.com for the mark alone and with 'lamp' and 'bulb,' and the searches returned no listings for the registrant's goods (Ex. 7)" is evidence.
• Execute the statement as a declaration under 37 C.F.R. § 2.20, which warns that willful false statements are punishable under 18 U.S.C. § 1001.
• Run a consistency check so that every date in the statement matches the log and the capture date on the exhibit it cites.

Why it matters. The Director institutes only for goods on which the petition "sets forth a prima facie case" of nonuse (15 U.S.C. § 1066a(c); 15 U.S.C. § 1066b(d)). The petition and its evidence become part of the public registration record and go to the registrant whether or not a proceeding is instituted (37 C.F.R. § 2.92(f)), so write nothing you would not want the registrant, or a later tribunal, to read.

Part 6: Petitioners, file, then protect your own position

• File on the USPTO's TEAS petition form with every element of a complete petition: the per-class fee, the registration number, the basis, the petitioner's name, domicile address, and email, attorney information where required, each challenged good copied exactly from the registration, the verified statement, and the evidence with its index (37 C.F.R. § 2.91(c)). Only a complete petition is considered, and once complete it cannot be amended.
• If you are challenging some goods under each basis, check the current form's instructions on combining expungement and reexamination and identify the goods separately for each basis. Remember that a pending reexamination blocks a later expungement of the same goods (37 C.F.R. § 2.92(d)(4)).
• Have a foreign-domiciled petitioner designate a U.S.-licensed attorney (37 C.F.R. § 2.91(c)(5)).
• Docket a TSDR check of the registration for the institution decision. You will not be asked to reply to anything; after institution the proceeding runs between the registrant and the Office (15 U.S.C. § 1066a(d)).
• Answer your own office action on time and ask the examining attorney to suspend. Filing a petition stays nothing (37 C.F.R. § 2.91(g)), but a pending proceeding relevant to registrability is ordinarily good cause for suspension under 37 C.F.R. § 2.67. The response mechanics are in Responding to a Trademark Office Action Checklist: A Practical Checklist.
• If you also have a TTAB case, ask the Board to suspend it pending the TMA proceeding (TBMP § 510.02(a)). A registrant win in the TMA proceeding does not preclude you at the Board, because the petitioner is not a party (Common Sense Press Inc. v. Van Sciver, Cancellation No. 92075375 (T.T.A.B. May 19, 2023) (precedential)).
• If the registrant offers to surrender or delete, get it filed formally as a surrender or amendment under 37 C.F.R. §§ 2.172 or 2.173, and confirm in TSDR that it was entered. After institution, a separate filing counts only if the registrant reports it in a timely response (37 C.F.R. § 2.93(d)(2)).
• If the Director refuses to institute, decide on the next move within weeks. The decision is final and non-reviewable (15 U.S.C. § 1066a(c)(3)), but it creates no estoppel, so a better-documented petition or a TTAB case remains open.

Part 7: Registrants, the first week after the institution notice

• Read the notice for five things: which proceeding it is, which goods are at issue (the Director may institute on fewer goods than the petition lists, or add others, under 37 C.F.R. § 2.92(c)(2)), the relevant date in a reexamination, how to access the petition and evidence, and any added requirement for a domicile address, electronic filing, or U.S. counsel (37 C.F.R. § 2.93(a)).
• Docket the response deadline: three months from the issue date, unless the action says otherwise (37 C.F.R. § 2.93(b)(1)). Set internal dates for collecting documents, drafting declarations, and review well before it.
• Docket the extension decision. One extension of one month is available on a request and fee (37 C.F.R. § 2.6(a)(27)) that the Office receives on or before the deadline. Missing both the deadline and the extension cancels the challenged goods.
• Confirm that the email address of record reaches someone who reads it, and check TSDR at least every three months until the notice of termination issues, as the rules now require (37 C.F.R. § 2.23(b), (d)(3)).
• If the registrant is domiciled outside the United States, retain a U.S.-licensed attorney now (37 C.F.R. § 2.11). An unmet representation requirement can sink a response that proves use.
• Check for a pending Section 8 or Section 71 declaration, a TTAB case, or litigation involving the registration, and bring litigation counsel into the response before anything is filed.
• Issue a preservation notice for sales, shipping, marketing, and web records from the relevant period, and suspend routine deletion. A checklist is in Litigation Hold and Evidence Preservation Checklist: A Practical Checklist.
• If the registration changed hands, record the assignment and collect the predecessor's records. The relevant date usually predates the transfer. See Recording a Trademark Assignment: A Practical Checklist.

Why it matters. The registrant usually receives a courtesy notice when the petition is filed but cannot respond until a proceeding is instituted (86 Fed. Reg. at 64,303). Use that gap to start collecting evidence. Once the clock starts, four months is the outside limit.

Part 8: Registrants, triage each challenged good

• Build a one-page matrix: each challenged good down the side; across the top, the date that matters, the best evidence, who holds it, who can testify to it, and the decision (defend or delete).
• Expungement: look for any genuine use before the petition filing date, or before institution in a Director-initiated case. Use that began after registration still counts (15 U.S.C. § 1066a(g); 37 C.F.R. § 2.93(b)(5)(i)).
• Reexamination: look only on or before the relevant date for each good (37 C.F.R. § 2.93(b)(6)(i)). Later use, however genuine, does not 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), where a manufacturer's shipment of labeled goods to the applicant was not use in commerce.
• Check each item against the identification exactly as written. A response may delete goods but may not otherwise amend the identification (37 C.F.R. § 2.93(d)), and Locus Link holds that the words, not the business, control.
• Separate goods in trade from promotional items. Items given away to promote something else are not goods in trade (TMEP § 1202.06), and software that merely supported another business was not a good in trade in Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376 (Fed. Cir. 2012).
• For services, confirm that the services were actually rendered under the mark by the date that matters. Advertising a service not yet available is not use (Couture v. Playdom, Inc., 778 F.3d 1379 (Fed. Cir. 2015)), and neither are preparations to offer it (Aycock Engineering, Inc. v. Airflite, Inc., 560 F.3d 1350 (Fed. Cir. 2009)); see also McCarthy on Trademarks and Unfair Competition § 19:103.
• If a licensee or affiliate made the sales, collect the license and evidence of quality control along with the sales records. Use by a related company counts only if the registrant controls the nature and quality of the goods (15 U.S.C. § 1055); see Trademark License and Quality Control Checklist: A Practical Checklist.

Part 9: Registrants, gather evidence that proves use under the statute

• Collect documents made in the ordinary course of business at the time: dated invoices, purchase orders, bills of lading and shipping records, e-commerce order exports, point-of-sale reports, distributor sell-through reports, and label or packaging printer invoices that show the mark.
• Add dated images and pages with provenance: photographs of goods, packaging, and signage (noting who took each, when, and how the date is known), and archived web pages from the period that offer the goods with a way to buy them. For services, add proof of performance: contracts, completed bookings, and client invoices.
• Do not stop at the specimen. The statute frees you from specimen formalities (evidence must be "consistent with" the 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 USPTO's manual warns that resubmitting the original specimen, or a verified statement alone, "will likely be insufficient" (TMEP § 1716.04(c)).
• Screen out token and reservation sales. Use in commerce means bona fide use "in the ordinary course of trade, and not made merely to reserve a right in a mark" (15 U.S.C. § 1127). An app rushed to market to support a pending application, after a much larger company announced a product under the same name, was use made merely to reserve a right in Social Technologies LLC v. Apple Inc., 4 F.4th 811 (9th Cir. 2021), and the registration fell with it; the 1988 amendments were aimed at exactly that kind of activity (M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368 (Fed. Cir. 2015)).
• Do not overreach on volume, but do not undersell small sales. One genuine interstate sale can satisfy the commerce element (Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986 (Fed. Cir. 2016)), but an examiner will look harder at a lone sale than at a run of ordinary business records.
• Back every statement in a declaration with a document. The USPTO has said that testimony should be supported by documentary evidence (86 Fed. Reg. at 64,304). Oral testimony about use can carry the day if it is "sufficiently probative," but testimony marked by inconsistencies and uncertainties about dates failed to prove use in Powermatics, Inc. v. Globe Roofing Products Co., 341 F.2d 127 (C.C.P.A. 1965).
• Summarize voluminous records, and attach representative originals. A short sales summary by month and good, with sample invoices behind it, is easier to read than a raw export.
• Redact genuinely confidential figures and be ready to petition to file the unredacted versions outside the public record if the examiner needs them (86 Fed. Reg. at 64,313).

Part 10: Registrants, decide what to defend, what to delete, and whether nonuse is excusable

• Weigh each good: the strength of the evidence against the value of keeping the good in the registration, including whether you assert it against others.
• Remember what defending earns. Proving use on a good bars later expungement of it, and winning a reexamination bars both later proceedings for it (37 C.F.R. § 2.92(d)(1)-(2)).
• Delete cleanly what you cannot prove. A deletion in a response is immediate and permanent, nothing can be added back, and no other amendment is allowed (37 C.F.R. § 2.93(d)(1)). Deletion while a Section 8 or 71 declaration is pending carries a per-class fee (37 C.F.R. § 2.161(c); 37 C.F.R. § 7.37).
• Report any separate surrender or amendment in a timely response. Otherwise it does not count as a response (37 C.F.R. § 2.93(d)(2)).
• Claim excusable nonuse only where it exists: in expungement, for goods whose sole basis is Section 44(e) or 66(a) (15 U.S.C. § 1066a(f); 37 C.F.R. § 2.93(b)(5)(ii)). Show what prevented use, when, what you did despite it, and when use will begin. Ordinary business choices do not qualify (Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575 (Fed. Cir. 1990); Rivard v. Linville, 133 F.3d 1446 (Fed. Cir. 1998); TMEP § 1604.11).
• File a new application for goods you sell now but cannot prove for the date that matters. It will rest on use you can document; see How to File a Trademark Application with the USPTO.

Part 11: Registrants, draft and file the response

• Open with a short cover statement that identifies the proceeding, the goods, the relevant date, and what the response offers for each good: evidence, excusable nonuse, or deletion.
• Attach one or more verified statements in numbered paragraphs from people with firsthand knowledge, describing each exhibit and how it shows use as of the date that matters (37 C.F.R. § 2.93(b)(7)). Use a declaration under 37 C.F.R. § 2.20 or 28 U.S.C. § 1746.
• Label every exhibit and attach an itemized index that makes clear which exhibit supports which good.
• State deletions unambiguously, good by good.
• Satisfy every requirement in the action: domicile address, U.S. counsel, and a valid email address.
• Have the registrant, a person with legal authority to bind it, or a qualified practitioner sign, and file through TEAS; responses sent by email or fax receive no filing date (37 C.F.R. § 2.93(b)(3)-(4)).
• File early enough to fix problems. A timely, bona fide, substantially complete response may earn the longer of 30 days or the rest of the period to supply an omission (37 C.F.R. § 2.93(b)(2)), but that grace is discretionary.

Part 12: Registrants, after the final action

• Docket three months from the final action to request reconsideration, appeal to the TTAB, or both (37 C.F.R. § 2.93(c)(1)). A request for reconsideration does not extend the appeal deadline.
• Put any new evidence in a request for reconsideration filed no later than the notice of appeal. The record closes when the appeal is filed, and the Board may not remand for more examination (37 C.F.R. § 2.142(d)(2)). In Locus Link the registrant filed its appeals and its reconsideration requests on the same day, and the Board suspended the appeals until reconsideration was decided.
• Route requirement disputes (domicile, U.S. counsel, electronic filing) to the Director by petition, not to the Board (37 C.F.R. § 2.93(c)(2)(ii)).
• For a TTAB appeal, file the notice of appeal and per-class fee within three months (15 U.S.C. § 1070; 37 C.F.R. §§ 2.141, 2.142(a)(2)), then the brief within 60 days (25 pages); the examiner answers, and a reply of up to 10 pages follows within 20 days.
• For Federal Circuit review, file the notice of appeal within 63 days of the Board's decision (37 C.F.R. § 2.145(d)(1); 15 U.S.C. § 1071(a)). There is no district court alternative for these registrants (§ 1071(b)(1)), and fact findings are reviewed for substantial evidence (Dickinson v. Zurko, 527 U.S. 150 (1999)).
• If the goods were cancelled for a missed deadline, petition the Director promptly. The petition must include the response, or an appeal (37 C.F.R. § 2.146(c)(2)), and is due two months after the action from which relief is sought or, if the notice was never received, within two months of actual knowledge and no later than six months after TSDR shows the cancellation (§ 2.146(d)). Expect to show extraordinary circumstances.
• When the notice of termination issues, keep it with the use evidence in your permanent file for the registration (37 C.F.R. § 2.94). It is the proof of your estoppel if anyone files again.

Part 13: Director-initiated proceedings and post-registration audits

• Treat a Director-initiated proceeding exactly like a petition-based one. The Director may institute either proceeding on the Office's own initiative, within the same windows, on information supporting a prima facie case, and must share that information with the registrant (15 U.S.C. § 1066a(h); 15 U.S.C. § 1066b(h); 37 C.F.R. § 2.92(b)). The deadlines and response options in Parts 7 through 12 apply unchanged.
• Assume every Section 8 or Section 71 declaration may be audited. The Office may demand added proof "to assess and promote the accuracy and integrity of the register" (37 C.F.R. § 2.161(b); 37 C.F.R. § 7.37). Under the audit program made permanent in 2017, a declaration listing one class with four or more items, or two classes with two or more each, may be selected, and the owner must then prove use for two more items per audited class. 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 audit action states. As written, the post-registration rule gives six months from issuance or until the end of the Section 8 filing period, whichever is later (37 C.F.R. § 2.163(b)); silence cancels the registration.
• Prove use with specimens that meet ordinary specimen rules (37 C.F.R. § 2.56). A web page offered for goods must work as a point of sale; a page whose only call to action is a phone number for "sales information" did not qualify in In re Siny Corp., 920 F.3d 1331 (Fed. Cir. 2019), although no picture of the goods is required (In re Sones, 590 F.3d 1282 (Fed. Cir. 2009)).
• Delete what you cannot prove, and budget for it. Deletions after the declaration is filed and before it is accepted carry a per-class fee (37 C.F.R. § 2.161(c)), and deleting audited items while others remain draws a second office action (Locke, 48 AIPLA Q.J. at 420).
• After any audit deletion, sweep the rest of the portfolio. The USPTO has said it may refer attorneys who sign plainly overbroad declarations to its Office of Enrollment and Discipline, and audits are a public record that a later petitioner will read. The response templates are in the Register Clearing Toolkit, and the filing itself is covered in Section 8 Declaration of Continued Use: A Practical Checklist.

Part 14: Registrants, keep your registrations out of trouble

• Keep a use archive for every registration: the first sale, a few dated invoices and web captures each year for each good, and dated photographs of goods and packaging. The questions arrive years after the facts.
• Never sign a statement of use for goods not yet sold. File a new intent-to-use application instead; the Trademark Statement of Use Checklist: A Practical Checklist and Intent-to-Use Trademark Applications: A Practical Guide cover the deadlines and extensions.
• Delete unused goods before the Section 8 declaration, not after it. A voluntary amendment under 37 C.F.R. § 2.173 before filing avoids the deletion fee (TMEP § 1609.03), and an accurate declaration is the best defense to both audits and petitions. See the Trademark Maintenance and Renewal Checklist: A Practical Checklist.
• Draft identifications in the words of the products you actually sell. A registration can later be narrowed by amendment but never broadened, so products outside the wording need a new application; see Identifying Goods and Services and Trademark Classification: A Practical Checklist.
• Keep correspondence details current and put every registration on a status watch, so that a courtesy notice of a petition reaches you while there is still time to gather evidence.
• Do not rely on incontestability. An incontestable registration is powerful in court (Park 'N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985); 15 U.S.C. § 1065), but expungement operates notwithstanding the incontestability provisions (15 U.S.C. § 1066a(a)), and Section 14(6) cancellation reaches incontestable registrations too.

Part 15: Stop a bad application earlier with a letter of protest

• File before publication if you can. Before publication, evidence need only be relevant to an identified ground for refusal; on or within 30 days after publication it must establish a prima facie case for refusal, and nothing is accepted later (37 C.F.R. § 2.149(c)-(d)).
• Raise only grounds an examining attorney could raise, such as likelihood of confusion with a registration or earlier application, descriptiveness or genericness, or a specimen that does not show use (TMEP § 1715.01(a)). Prior common-law rights, fraud, and ownership disputes belong in an opposition (TMEP § 1715.01(b)).
• Stay inside the limits: no more than 10 items of evidence per ground and 75 pages in total without a showing of special circumstances, and an itemized index that does not identify the protestor or contain legal argument (37 C.F.R. § 2.149(f)).
• For a doctored specimen, show the earlier source image next to the specimen, with the URL and date of the earlier listing.
• Pay the fee and file through TEAS (37 C.F.R. § 2.6(a)(25)); it was $50 when the fee was introduced in 2021, and the January 2025 fee rule changed many trademark fees, so confirm the current amount.
• Protect the opposition deadline anyway. A protest does not stay or extend the time to oppose (37 C.F.R. § 2.149(e); 15 U.S.C. § 1063), so request an extension of time to oppose if you might need one. See Filing a TTAB Notice of Opposition: A Practical Checklist.
• Expect silence. The Director decides within two months whether the evidence goes into the record, the decision is final and non-reviewable (15 U.S.C. § 1051(f)), and the protestor may not contact the examining attorney (37 C.F.R. § 2.149(k)).

Key deadlines at a glance

Common mistakes

Petitioners: computing windows from the filing date instead of the registration date; investigating the present instead of the relevant period; reconstructing the search log afterward; screenshots without URLs or dates; challenging every listed good by default and handing the registrant estoppel on the ones it can prove; tipping off the registrant before an expungement petition; and letting their own office-action deadline lapse because "the petition is pending."

Registrants: a stale correspondence email; asking for the one-month extension after the deadline; resubmitting the original specimen with a one-paragraph declaration; declarations full of conclusions or signed by people without firsthand knowledge; evidence dated after the relevant date in a reexamination; trying to reinterpret the identification instead of proving use or deleting; and filing the appeal before the record is complete.

Frequently asked questions

Can a petition be filed against a pending application? No. Both proceedings apply only to registrations. Use a letter of protest or an opposition against an application.

If we settle with the petitioner, does the proceeding end? Not by itself. After institution the proceeding runs between the registrant and the Office, so the registrant must still respond, by proof or by deletion. A settlement can include a covenant not to file further challenges.

Does losing a TMA proceeding end the registrant's rights in the mark? It ends the registration for the cancelled goods, not common-law rights earned through actual use, but it costs the presumptions and nationwide priority that made the registration valuable. See Trademark Use and Protection: How Brand Rights Are Born, Built, and Lost.

Does a TMA result bind anyone later? A registrant that proves use gets the statutory estoppel against later TMA petitions on those goods, but the petitioner is not precluded at the TTAB, because it was not a party (Common Sense Press). Contested Board decisions are different and can be preclusive in court under B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138 (2015). Either way, expect a TMA loss to be quoted in any later dispute.

Is the evidence in the TMA file usable in a later Board case? Partly. In a cancellation against the same registration, the registration file, which now holds the petition and any response, is automatically part of the record, but proving the truth of what those papers say is governed by 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)). Capture and preserve evidence so that a witness can authenticate it; see the TTAB Practice Toolkit: Oppositions, Cancellations, and the Trademark Trial and Appeal Board from Pleading to Appeal.

Practical takeaways

• Compute three dates first. The third, fifth, and tenth anniversaries of registration decide which tools exist.
• Investigate the past and log as you go. The verified statement must say how and when every search was done.
• Petition narrowly. A registrant that proves use earns estoppel on those goods against everyone.
• For registrants, the response is the trial. Ordinary-course documents, factual declarations, candid deletions.
• Read the identification literally. Only deletions are allowed once a proceeding starts.
• Complete the record before appealing. The record closes at the notice of appeal.
• Prevention is cheaper. Truthful statements of use, 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: why each item on this list exists, with the statute, the rules, and the TTAB decisions explained.
• Trademark Use and Protection: How Brand Rights Are Born, Built, and Lost: use in commerce and abandonment, the doctrines every nonuse challenge turns on.
• Genericness, Genericide, and Acquired Distinctiveness: Where Trademark Protection Begins and Ends: registrability challenges that expungement and reexamination cannot reach.
• Capturing the Web: A Practitioner's Guide to Authenticating Website Screenshots as Evidence in Federal Court: making archived captures usable in court.

Related Guides

• Filing or Responding to a Trademark Expungement or Reexamination Petition: A Practical Guide: the same steps as a narrative, with a worked reexamination example.
• Enforcing Trademarks Against Online Sellers and Platforms: A Practical Guide: marketplace investigation and test-purchase methods that transfer to nonuse investigations.
• Maintaining Trademark Registrations: Section 8, 9, and 71 filings and the audits that test them.

Related Checklists

• Petitioning to Cancel a Trademark Registration: A Practical Checklist: the Board route for abandonment, fraud, and Section 14(6).
• Online Marketplace Trademark Enforcement Checklist: A Practical Checklist: marketplace searches and records that double as nonuse evidence.
• Authenticating Website Evidence: A Practical Checklist: capture and authentication steps for web evidence.
• Section 8 Declaration of Continued Use: A Practical Checklist: accurate declarations that survive audits.
• Trademark Specimen Preparation Checklist: A Practical Checklist: specimens that will hold up when someone checks them years later.
• Litigation Hold and Evidence Preservation Checklist: A Practical Checklist: preserving the records a response will need.

Related Toolkits

• Register Clearing Toolkit: Nonuse Investigations, Petition Templates, and Post-Registration Audit Responses: search logs, evidence indexes, verified statements, response and audit templates.
• Online Trademark Enforcement Toolkit: Platform Notices, Test Purchase Records, and Contributory Liability Demands: test-purchase records that support a petition.
• TTAB Practice Toolkit: Oppositions, Cancellations, and the Trademark Trial and Appeal Board from Pleading to Appeal: the stage-by-stage map for a contested Board case with discovery.