The debate about the integrity of the U.S. trademark register and the prevalence of fraudulent registrations has been raging for years. Fraudulent registrations clutter up the trademark register, diluting brand owners’ trademark rights and posing obstacles to the adoption and registration of legitimate trademarks. Dealing with them costs brand owners valuable time, money, and energy.
These two newest mechanisms to remove fraudulent registrations, reexamination proceedings, and expungement proceedings are less well known than the options that previously existed (e.g., cancellation proceedings). They allow brand owners to petition for the removal of select registrations where the mark was either (1) not in use as of a specific date or (2) never put into use altogether. As of May 6, 2025, these mechanisms successfully removed 50,000 goods and services from registrations on the U.S. federal trademark register. Celebrating over 50,000 canceled goods and services, USPTO (May 6, 2025, 1:48 PM), https://content.govdelivery.com/accounts/USPTO/bulletins/3defc5f
Reexamination and expungement proceedings are very useful in addressing problematic registrations with minimal investment by a brand owner. The proceedings are ex parte, meaning that, once the evidence is collected and the proceeding is instituted, the petitioner does not touch the proceeding again. The U.S. Patent and Trademark Office does all the heavy lifting. It reviews the petitioner’s evidence, issues office actions, and scrutinizes any new evidence of use provided by the registrant.
In March 2024, the Government Accountability Office estimated that at least 1 million trademark registrations are vulnerable to these proceedings due to fraudulent filings. U.S. Gov’t Accountability Off., GAO-24-106533, Report to Congressional Committees, Intellectual Property: Stronger Fraud Risk Management Could Improve the Integrity of the Trademark System (2024). A 2021 investigation by the Office of the Inspector General estimated that as many as 37% of new approved use-based applications contain digitally altered specimens of use. U.S. Dept. of com., Off. of the Inspector Gen., OIG-21-033-A, USPTO Should Improve Controls over Examination of Trademark Filings to Enhance the Integrity of the Trademark Register (Aug. 11, 2021). At least 8% of accepted maintenance filings contained digitally altered specimens that slipped through the cracks. Id. The USPTO trademark examiners are only human; they can’t catch everything. These new mechanisms give brand owners another tool to address this issue and police their marks, or clear their path to registration, on their own.
If so many registrations are vulnerable, how worried should brand owners be about being subject to one of these proceedings? Truthfully, not much, so long as the brand owners:
1. Are truthful when filing their trademark applications or statements of use,
2. Claim accurate dates of first use, and
3. Actually use the mark in connection with all claimed goods or services when required to by U.S. law.
In other words, there is little risk so long as the brand owners submit truthful information to the United States Patent and Trademark Office and continue to use their trademark. Trademark rights in the United States are accrued and maintained through active use of a mark. Registrations reflect this use. By identifying goods or services in a registration, the trademark owner is claiming that the mark is actively in use with all of those goods and services.
If a brand owner is indeed using its mark with all the goods and services identified in a registration, then it has no reason to worry about a reexamination or expungement proceeding. The most difficult aspect of defending a reexamination or expungement proceeding simply becomes collecting relevant evidence. Relevant evidence for each type of proceeding is discussed below:
- Reexamination Proceeding: The type of evidence the mark owner needs to produce to prove the mark was in use depends on (i) the type of application that was originally filed and (ii) what filings were made during the application’s prosecution.
- If the application was based on use, the brand owner needs to prove the mark was in use as of the filing date of the application.
- If the application was based on an intent-to-use the mark in commerce and the brand owner filed an Amendment to Allege Use, the brand owner needs to prove the mark was in use as of the filing date of the amendment
- If the application was based on an intent-to-use basis and the brand owner filed a Statement of Use, the brand owner needs to prove the mark was in use as of the last day of the final approved period for filing the Statement of Use.
- Expungement Proceeding: The mark owner needs to prove that the mark was in use at any time between registration to the initiation of the proceeding.
Ultimately, the best way to respond to these proceedings or avoid them altogether is the most obvious. Make truthful, accurate filings; be ethical; and keep good business records. Brand owners may still find their registrations subject to these proceedings, but responding is straightforward so long as the registrations are accurate.
If you are interested in learning more about expungements and reexaminations, look for Sarah Leighton’s article “The Implementation and Effectiveness of Trademark Expungement and Reexamination Proceedings” in the May 2025 edition of IDEA: The Law Review of the Franklin Pierce Center for Intellectual Property (law.unh.edu/academics/journals/idea).
If one of your registrations is subject to an expungement or reexamination proceeding, contact Saunders & Silverstein LLP to discuss how we can help.
