Understanding Expungement and Reexamination at the USPTO

In the evolving landscape of trademark law, one of the biggest frustrations for business owners is discovering that a name or logo they want to use is already registered but never actually used. For years, these “dead weight” registrations cluttered the federal register, blocking legitimate brands from obtaining protection. To address this, the United States Patent and Trademark Office (USPTO) introduced new proceedings, expungement and reexamination as part of the Trademark Modernization Act of 2020 (TMA).

Both procedures make it easier to challenge existing registrations that are not in use, helping clear the register of marks that were filed in bad faith or never commercially active. For entrepreneurs, startups, and established businesses alike, understanding how these proceedings work can be the key to protecting your rights and reclaiming the space your brand deserves.

What Is a Trademark Expungement Proceeding?

An expungement proceeding allows anyone to request the removal of goods or services from a registered trademark if the owner never used the mark in commerce for those specific items. This procedure targets marks that were registered without proof of real-world use, especially those based on foreign applications or filings that relied on international treaties rather than U.S. commerce.

The key element of an expungement claim is proving nonuse since the registration date. If a brand owner never sold or provided the listed goods or services in the U.S., that registration can be challenged. This process ensures that the federal register only includes trademarks tied to genuine commercial activity.

Under the USPTO’s current rules, a petitioner can request expungement between three and ten years after the registration date. However, for a limited time, the USPTO has permitted “catch-up” filings against older registrations through December 27, 2023, giving businesses a chance to address marks that had been idle for years.

What Is a Trademark Reexamination Proceeding?

A reexamination proceeding applies when a mark was not in use at the time the owner claimed it was, such as when filing a use-based application or submitting a statement of use. Unlike expungement, which looks at whether the mark was ever used, reexamination focuses on whether it was used as claimed. For example, when the applicant alleged use before actual sales occurred.

This proceeding can be requested within the first five years of registration. The purpose is to keep applicants honest and ensure that every mark on the register reflects genuine, verifiable use in commerce at the time the owner declared it.

Why the USPTO Introduced These Proceedings

Before the TMA, clearing unused trademarks often required costly cancellation actions before the Trademark Trial and Appeal Board (TTAB). These new proceedings offer a faster, more affordable alternative for both the public and the USPTO. By allowing challenges based on nonuse, the system now promotes a cleaner, more accurate trademark register.

This change is particularly important in today’s global economy. Many foreign applicants used to file marks in the United States based on international treaties, without ever doing business here. Expungement and reexamination help filter out those registrations, opening the door for active U.S. businesses to secure the rights they need to operate confidently.

How to File an Expungement or Reexamination Request

To request an expungement or reexamination, the petitioner must file a written submission through the USPTO showing a reasonable investigation of nonuse. This includes detailed evidence, such as online searches, marketplace reviews, and public records, demonstrating that the trademark is not being used on the goods or services listed.

The request must identify specific goods or services being challenged and provide supporting documentation. The USPTO will then review the evidence and determine whether to institute the proceeding. If the Director finds a reasonable basis for nonuse, the office will notify the registrant and allow them to respond with proof of use or explanations of special circumstances.

If the owner fails to provide sufficient evidence, the USPTO will cancel the registration for those goods or services. In cases where only part of the registration is unused, the USPTO will narrow it rather than cancel it entirely.

What Happens After a Proceeding Is Initiated

Once a proceeding begins, the trademark owner has an opportunity to defend their registration by submitting evidence that the mark was or is being used properly. Acceptable evidence might include invoices, advertising materials, or photos showing the mark in connection with the relevant goods and services.

If the USPTO determines that the owner did not use the mark as claimed, it will remove those goods or services from the registration record. This partial cancellation helps keep the register accurate without invalidating legitimate uses of the trademark.

For brands that rely heavily on online marketplaces or digital products, this process underscores the importance of maintaining thorough records of trademark use. Documenting your brand activity not only proves current use but also safeguards your registration in case of future challenges.

The Benefits for Entrepreneurs and Brand Owners

For small businesses and startups, these proceedings are a major win. Many founders run into trademark conflicts early in their journey when a name they want is “taken” by a mark that was never used. Previously, clearing such marks required expensive litigation before the TTAB. Now, with expungement and reexamination, brand owners have a faster, cost-effective way to reclaim space on the federal register.

This change also strengthens the integrity of the trademark system itself. The federal register is not just a database, it is a reflection of the active marketplace. By removing unused marks, the USPTO ensures that new businesses have access to names that reflect real commercial use rather than paperwork.

How Cohn Legal Helps with Expungement and Reexamination

Navigating expungement or reexamination requires a mix of strategic thinking and precise legal documentation. At Cohn Legal, PLLC, our attorneys assist clients in both initiating and defending these proceedings. Whether you’re trying to clear a path for a new trademark or protect your own registration from attack, our team handles the process from investigation to response.

We help clients conduct proper use audits, collect supporting evidence, prepare USPTO filings, and communicate with the examining attorneys overseeing the matter. Our mission is to simplify complex legal procedures while protecting what matters most, your brand identity.

Final Thoughts

The USPTO’s expungement and reexamination tools mark a shift toward fairness and accountability in trademark registration. If your desired mark is blocked by an unused registration, or if you’ve received notice of a proceeding against your own mark, understanding the process is crucial. These proceedings offer a faster, more affordable path to maintaining a healthy trademark portfolio and ensuring that the federal register reflects real-world business activity.

Your brand is one of your most valuable assets. Keeping it secure means staying informed, proactive, and ready to act when your rights are at stake.

At Cohn Legal, PLLC, we guide clients through every stage of brand protection from registration and enforcement to expungement and beyond so your intellectual property remains as strong as the business behind it.