14 Jun 2022
Expungement and Reexamination Proceedings under the Trademark Modernization Act
The Trademark Modernization Act (TMA) amended the Lanham Act to establish new expungement and reexamination proceedings. The goal of the proceedings is to remove marks that do not meet the use in commerce requirements from the USPTO trademark register that may be blocking legitimate business owners from registering their marks. Additionally, the proceedings are intended to provide a more efficient and less expensive alternative to a contested TTAB inter partes cancellation proceeding. Read this practice note for expert guidance on the proceedings including the grounds for each type of petition, procedural considerations including time limits and who can file, requirements for investigating and filing petitions, a registrant's options for proving use or otherwise responding to petitions, and how the USPTO processes and examines the petitions.
Related Content
- Trademark Modernization Act Overview
Understand the key changes to trademark law contained in the Trademark Modernization Act of 2020, including a rebuttable presumption of irreparable harm when seeking injunctive relief, a process for submitting third-party evidence during trademark examination, shortened office action response periods, new ex parte expungement and reexamination procedures for cancelling existing registrations, and a new ground for cancellation of non-use.
- What To Know Before New Trademark Final Rules Take Effect
Review Law360 analysis of the changes to trademark law brought on by the Trademark Modernization Act and access related Practical Guidance content.
- TTAB Proceedings Resource Kit
Access a collection of materials on TTAB proceedings including overviews of opposition and cancellation proceedings and guidance on preparing and filing pleadings, taking discovery, submitting evidence, and more.
- Trademark Enforcement Resource Kit
Explore more resources on preventing misuse, policing, and enforcing marks with this resource kit.
Practical Guidance Updates
Featuring the latest updates from your Practical Guidance account.
- Check out the new Practical Guidance Author Center! Learn about the 1500+ leading attorney authors contributing to our 21 practice areas, and find out how you can Become a Practical Guidance Author.
- Legal Developments provide the latest updates and analyses of emerging topics impacting your practice area. Visit the Legal Developments page to see the latest topics, which also include breaking legal news and related Practical Guidance content.
- Ukraine Invasion Resource Kit covers U.S. sanctions in response to the Russian invasion including Intellectual Property & Technology guidance on the impact of sanctions and Russian actions related to IP rights.
- Document alerts allow you to stay current on legal developments that affect your practice. Find out how to set up your document alerts.
Experience results today with practical guidance, legal research, and data-driven insights—all in one place.
Experience Lexis+