37 CFR 2.91 — Rules of Practice in Trademark Cases
Current through: 2024-07-01

Petition for expungement or reexamination.

§ 2.91 Petition for expungement or reexamination. (a) Petition basis. Any person may file a petition requesting institution of an ex parte proceeding to cancel a registration of a mark, in whole or in part, on one of the following bases: (1) Expungement, if the mark is registered under sections 1, 44, or 66 of the Act and has never been used in commerce on or in connection with some or all of the goods and/or services recited in the registration; or (2) Reexamination, if the mark is registered under section 1 of the Act and was not in use in commerce on or in connection with some or all of the goods and/or services recited in the registration on or before the relevant date, which for any particular goods and/or services is determined as follows: (i) In an application for registration of a mark with an initial filing basis of section 1(a) of the Act for the goods and/or services listed in the petition, and not amended at any point to be filed pursuant to section 1(b) of the Act, the relevant date is the filing date of the application; or (ii) In an application for registration of a mark with an initial filing basis or amended basis of section 1(b) of the Act for the goods and/or services listed in the petition, the relevant date is the later of the filing date of an amendment to allege use identifying the goods and/or services listed in the petition, pursuant to section 1(c) of the Act, or the expiration of the deadline for filing a statement of use for the goods and/or services listed in the petition, pursuant to section 1(d), including all approved extensions thereof. (b) Time for filing. The petition must be filed while the registration is in force and: (1) Where the petition requests institution of an expungement proceeding under paragraph (a)(1) of this section, at any time following the expiration of 3 years after the date of registration and, for petitions made after December 27, 2023, before the expiration of 10 years following the date of registration; or (2) Where the petition requests institution of a reexamination proceeding under paragraph (a)(2) of this section, at any time not later than 5 years after the date of registration. (c) Requirements for complete submission. Petitions under this section must be timely filed through TEAS. Only complete petitions under this section will be considered by the Director under § 2.92, and, once complete, may not be amended by the petitioner. A complete petition must be made in writing and must include the following: (1) The fee required by § 2.6(a)(26); (2) The U.S. trademark registration number of the registration subject to the petition; (3) The basis for petition under paragraph (a) of this section; (4) The name, domicile address, and email address of the petitioner; (5) If the domicile of the petitioner is not located within the United States or its territories, a designation of an attorney, as defined in §  11.1 of this chapter, who is qualified to practice under §  11.14 of this chapter; (6) If the petitioner is, or must be, represented by an attorney, as defined in § 11.1 of this chapter, who is qualified to practice under § 11.14 of this chapter, the attorney's name, postal address, email address, and bar information under § 2.17(b)(3); (7) Identification of each good and/or service recited in the registration for which the petitioner requests that the proceeding be instituted on the basis identified in the petition; (8) A verified statement signed by someone with firsthand knowledge of the facts to be proved that sets forth in numbered paragraphs: (i) The elements of the reasonable investigation of nonuse conducted, as defined under paragraph (d) of this section, where for each source of information relied upon, the statement includes a description of how and when the searches were conducted and what the searches disclosed; and (ii) A concise factual statement of the relevant basis for the petition, including any additional facts that support the allegation of nonuse of the mark in commerce on or in connection with the goods and services as specified in paragraph (a) of this section; and (9) A clear and legible copy of all documentary evidence supporting a prima facie case of nonuse of the mark in commerce and an itemized index of such evidence. Evidence that supports a prima facie case of nonuse may include, but is not limited to: (i) Verified statements; (ii) Excerpts from USPTO electronic records in applications or registrations; (iii) Screenshots from relevant web pages, including the uniform resource locator (URL) and access or print date; (iv) Excerpts from press releases, news articles, journals, magazines, or other publications, identifying the publication name and date of publication; and (v) Evidence suggesting that the verification accompanying a relevant allegation of use was improperly signed. (d) Reasonable investigation of nonuse. A petitioner must make a bona fide attempt to determine if the registered mark was not in use in commerce or never in use in commerce on or in connection with the goods and/or services specified in paragraph (c)(7) of this section by conducting a reasonable investigation. (1) A reasonable investigation is an appropriately comprehensive search, which may vary depending on the circumstances but is calculated to return information about the underlying inquiry from reasonably accessible sources where evidence concerning use of the mark during the relevant time period on or in connection with the relevant goods and/or services would normally be found. (2) Sources for a reasonable investigation may include, but are not limited to: (i) State and Federal trademark records; (ii) internet websites and other media likely to or believed to be owned or controlled by the registrant; (iii) internet websites, other online media, and publications where the relevant goods and/or services likely would be advertised or offered for sale; (iv) Print sources and web pages likely to contain reviews or discussion of the relevant goods and/or services; (v) Records of filings made with or of actions taken by any State or Federal business registration or regulatory agency; (vi) The registrant's marketplace activities, including, for example, any attempts to contact the registrant or purchase the relevant goods and/or services; (vii) Records of litigation or administrative proceedings reasonably likely to contain evidence bearing on the registrant's use or nonuse of the registered mark; and (viii) Any other reasonably accessible source with information establishing nonuse of the mark as specified in paragraph (a) of this section. (3) A petitioner need not check all possible appropriate sources for its investigation to be considered reasonable. (e) Director's authority. The authority to act on petitions made under this section is reserved to the Director, and may be delegated. (f) Oral hearings. An oral hearing will not be held on a petition except when considered necessary by the Director. (g) No stay. The mere filing of a petition for expungement or reexamination by itself will not act as a stay in any appeal or inter partes proceeding that is pending before the Trademark Trial and Appeal Board, nor will it stay the period for replying to an Office action in any pending application or registration. (h) Real party in interest. The Director may require that the real party or parties in interest be identified in connection with any petition filed under this section. [86 FR 64327, Nov. 17, 2021]