Understanding Trademark Expungement and Reexamination Proceedings
U.S. trademark law grants parties the right to challenge a trademark owned by another party. Indeed, the Trademark Modernization Act of 2020 (TMA) reforms federal law to streamline cancellation proceedings. Depending on the circumstances, a third party may petition to cancel another party’s trademark through 1) Expungement, or 2) Reexamination. Within this blog post, our Boca Raton trademark law attorney provides an overview of the key things you should know about expungement and reexamination proceedings.
Trademark Expungement: Explained
Trademark expungement refers to the legal process of removing a registered trademark from the official register due to certain reasons. It can occur if the trademark was never used in commerce in association with some or all of the goods or services specified in the registration. Commercial use is a key requirement of trademark registration. The expungement ensures that the trademark register remains an accurate reflection of marks that are actually in use.
Timeline for Trademark Expungement: A third party may file a petition for a trademark expungement at any point between three years and 10 years after the initial registration date.
Trademark Reexamination: Explained
Trademark reexamination is a procedure where a third party challenges the validity of an already registered trademark based on certain grounds. During this process, the trademark’s registration is reviewed to determine if it should have been granted in the first place because the mark in question was not in use in commerce by a specific relevant date.
Timeline for Trademark Reexamination: A third party may file a petition for a trademark expungement at any point within the first five years after the initial registration date.
What Do You Have to Prove in a Petition for Trademark Expungement/Reexamination
To successfully cancel another party’s trademark through the expungement and reexamination process, it is imperative that you submit a strong, comprehensive, and well-supported petition. Here are the key things that you will need to prove in your petition:
- Trademark Expungement: A trademark expungement petition requires proving that the other party never actually used the trademark in question in commerce.
- Trademark Reexamination: A trademark expungement petition requires proving that the other party did not have their trademark in commercial use by the appropriate date.
How Can an Attorney Help with a Trademark Expungement and Reexamination Petition
You do not have to navigate an intellectual property matter on your own. A top Florida attorney who specializes in trademark law can provide trustworthy and solutions-driven assistance with the full range of cancellation approaches, including trademark expungement and trademark reexamination proceedings. Among other things, your Florida trademark lawyer will help you navigate the complexities of the USPTO’s cancellation process, ensuring that the paperwork is filed correctly, all relevant deadlines are met, and that your petition is well-supported by reliable evidence.
Contact our Boca Raton, FL Trademark Lawyer Today
At Perkins Law, our intellectual property attorney can handle your trademark expungement and reexamination proceedings. Have questions about your options? We are here to help. Call us now or connect with us online to arrange a fully confidential initial appointment. With a legal office in Boca Raton, our legal team represents clients throughout Southeast Florida.
Source:
uspto.gov/about-us/news-updates/uspto-implements-trademark-modernization-act
