While some changes brought by the implementation of the Trademark Modernization Act (“TMA”) four years ago have been well publicized and integrated into daily trademark practice, others are only just now starting to impact the United States Patent and Trademark Office’s (the “USPTO”) procedures. The new expungement and reexamination proceedings, for example, have been prominently and enthusiastically embraced by the USPTO (i.e., 93.3% of instituted reexamination proceedings were instituted by the USPTO); other TMA additions have been coming slower and are just now being realized.

The most recent insight is in the new expungement ground for a cancellation proceeding. 15 U.S.C. § 1064(6). This new basis is straightforward: a party may petition to cancel a registration if the mark has not been put into use three years from the date of registration. 15 U.S.C. § 1064(6) (“Section 14(6)”). If this sounds familiar, it should. These are essentially the same requirements to institute an ex parte expungement proceeding with the USPTO. Despite the number of expungement petitions filed over the past four years, there were no Trademark Trial and Appeal Board (“TTAB”) opinions addressing an expungement claim in a cancellation. That changed earlier this summer.

The case in question started back in 2022. JaM Cellars, Inc. (later JT Spirits, LLC (“JT Spirits”)) filed a petition to cancel Global Brands Manufacturing, S.A. de C.V. (“Global Brands”) registration for DESPACITO for alcoholic beverages and distilled spirits. JT Spirits, LLC v. Global Brands Manufacturing, S.A. de C.V., (T.T.A.B. July 18, 2025). The cancellation had three bases — the registration was void as there was no intent to use the mark, abandonment, and expungement.

In defense of this petition, Global Brands asserted that its registration was registered with a Section 44(e) filing basis and therefore protected from expungement due to excusable non-use. Id. at 10. It claimed that there was excusable non-use of the DESPCAITO mark due to disruption from the COVID-19 pandemic. JT Spirits disagreed and claimed that Global Brands’ non-use was due to its own inaction.

In July, the TTAB issued stated that the same framework of excusable nonuse in an abandonment claim is instructive in a Section 14(6) claim. Essentially, the registrant must provide sufficient facts to demonstrate how an outside cause, like a pandemic, temporarily forced its mark from the marketplace. Id.

While non-precedential, this opinion has the potential to influence proceedings beyond Section 14(6) cancellations. One of the brand owner’s acceptable responses to an ex parte expungement proceeding is to demonstrate excusable non-use. 15 U.S.C. § 1066a(f). However, to date, there have been no appeals of ex parte expungement proceedings to the TTAB to determine the standard for excusable non-use. That said, as Section 14(6) claims and the grounds for expungement are nearly identical, we can infer that the same framework applies to both.

If you are interested in instituting either a 14(6) claim or an expungement proceeding, or if you have a registration that is the subject to one, contact Saunders & Silverstein LLP to discuss how we can help.

By: Sarah Leighton|sleighton@sandsip.com