Overview
In December, the USPTO introduced streamlined rules for seeking cancellation of trademarks that (a) were not in use when the trademark application or Statement of Use were filed (reexamination), or (b) are at least three years old and cover marks that have never been used in U.S. commerce (expungement).
The USPTO has since received about 50 petitions for expungement or reexamination, instituting only seven expungement proceedings and two reexamination proceedings. In one noteworthy proceeding concerning the mark GALAVAVA covering over a dozen goods in Class 21, a third-party petitioner was able to establish a prima facie case for expungement for four of the goods. Interestingly, the USPTO simultaneously instituted a director-initiated expungement proceeding for the remaining goods in the registration, based on its own investigation. In particular, the USPTO relied on Google searches for the mark and owner, and searches for the mark on relevant e-commerce sites including Amazon, Home Depot, Lowes, Walmart, and Dick’s Sporting Goods. Importantly, the USPTO also searched the “Wayback Machine” (archive.org) for both the mark and the owner.
