The TTAB recently issued a precedential decision affirming a reexamination decision under Section 16B of the Trademark Act against the mark EVERWISE CREDIT UNION because the specimen was insufficient to demonstrate bona fide use of the mark in commerce. In re Everwise Credit Union, Reexamination No. 2023-100533R for Registration No. 7068783 (TTAB Apr. 29, 2026).
Expungement and reexamination proceedings are ex parte proceedings created by the Trademark Modernization Act of 2020. Common Sense Press Inc. v. Van Sciver, No. 92075375, 2023 WL 3596333, at *2 (TTAB 2023) (citing Trademark Act Sections 16A (expungement), 16B (reexamination), 15 U.S.C. §§ 1066a, 1066b; Trademark Rules 2.91-2.94, 37 C.F.R. §§ 2.91-2.94). Both types of proceedings are instituted by the USPTO Director in connection with a registration, either on the Director's own initiative or pursuant to a petition filed by a third party. In an expungement proceeding, it must be demonstrated that a mark has never been used in commerce on or in connection with some or all of the goods and/or services recited in the registration. Common Sense Press, 2023 WL 3596333, at *2 (citing Trademark Act Sections 16A(c)(1), 15 U.S.C §§ 1066a(c)(1)). In a reexamination proceeding, it must be shown that a mark was not in use in commerce on or in connection with some or all of the goods or services recited in the registration on or before the relevant date, as explained more fully below. Id. (citing Trademark Act Section 16B(d)(1), 1066b(d)(1); 37 C.F.R. § 2.92); see also TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1716 (Nov. 2025).
In a reexamination proceeding, the USPTO may cancel a registration, in whole or in part, if the evidence of record shows that the registered mark was not in use in commerce as of the filing date of a use-based application or, in the case of an intent-to-use application, as of the date of an amendment to allege use, or as of the deadline for filing a statement of use, including all approved extensions, as applicable. Section 16B(g) of the Trademark Act, 15 U.S.C § 1066b(g); Trademark Rule 2.91(a)(2), 37 C.F.R. § 2.91(a)(2). Accordingly, a reexamination proceeding is applicable only to registrations based on use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). Trademark Rule 2.91(a)(2), 37 C.F.R. § 2.91(a)(2).
If a reexamination proceeding is instituted based on a prima facie showing of nonuse, the registrant will be required to provide evidence of use, information, exhibits, affidavits, or declarations as may be reasonably necessary to rebut the prima facie case of nonuse by establishing that the required use in commerce has been made on or in connection with the goods and/or services at issue as of the relevant date. 37 C.F.R. 2.93(a); see also CHANGES TO IMPLEMENT PROVISIONS OF THE TRADEMARK MODERNIZATION ACT OF 2020, 86 Fed. Reg. 26,866 (May 18, 2021). “A registrant's documentary evidence of use shall be consistent with when a mark shall be deemed to be in use in commerce under the definition of ‘use in commerce' in section 1127 … .” 15 U.S.C. § 1066b(f).
Use in commerce” is the bona fide use of a mark in the ordinary course of trade. Section 45 of the Trademark Act, 15 U.S.C. § 1127. Only bona fide use of a mark in the ordinary course of trade will support registration of a mark. Use made merely to reserve a right in a mark does not meet the statutory standard of bona fide use in the ordinary course of trade. See TMEP § 901.02 (citing legislative history for the Trademark Law Revision Act of 1988 (TLRA), Public Law 100-667, 102 Stat. 3935); see also Couture v. Playdom, 778 F.3d 1379, 1381 (Fed. Cir. 2015) (“The term ‘use in commerce' means the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”); Lens.com, Inc. v. 1-800 Contacts, Inc., 686 F.3d 1376, 1380 (Fed. Cir. 2012) (same); Aycock Eng'g., Inc. v. Airflite, Inc., 560 F.3d 1350, 1357 (Fed. Cir. 2009) (explaining the requirement that a mark be used in the “ordinary course of trade”).
Evidence of use must be accompanied by a statement from someone with firsthand knowledge verified under Trademark Rule 2.20, 37 C.F.R. § 2.20, that sets forth in numbered paragraphs facts about use of the mark in commerce and the supporting documentary evidence, including how the evidence demonstrates use of the mark in commerce as of the relevant date for the goods or services at issue. Trademark Rule 2.93(b)(7), 37 C.F.R. § 2.93(b)(7).
Acceptable documentary evidence of use of the mark in commerce includes specimens of use filed pursuant to Trademark Rule 2.56, 37 C.F.R. § 2.56. But simply resubmitting a previously submitted specimen without additional supporting evidence generally will not rebut a prima facie case of nonuse. See TMEP § 1716.04(c) (“Generally, because the registration file has already been considered in instituting the proceeding based on a prima facie case of nonuse, merely resubmitting the same specimen of use previously submitted in support of registration or maintenance thereof, or a verified statement alone, without additional supporting evidence, will likely be insufficient to rebut a prima facie case of nonuse.”). If a specimen showing use of the mark as of the relevant date is no longer available for particular goods or services, the registrant may provide other evidence or explanations supported by a verified statement under Trademark Rule 2.20, 37 C.F.R. § 2.20, that demonstrate the mark was used in commerce as of the relevant date. See id.
As an alternative to introducing evidence to rebut the prima facie case of nonuse, the registrant may delete the goods or services at issue in the proceeding. Trademark Rule 2.93(b)(6)(ii), 37 C.F.R. § 2.93(b)(6)(ii). If the registrant deletes all of the goods or services in the registration, that is the same as surrendering the registration for cancellation, and the registration will be cancelled in its entirety, also mooting the proceeding. See 15 U.S.C. § 1057(e); Trademark Rule 2.172, 37 C.F.R. § 2.172.
In Everwise, the TTAB held that the specimen of use for the EVERWISE CREDIT UNION mark failed to demonstrate bona fide use in commerce because the tagline “Why TCU? Because we are an Everwise Credit Union™” would not be perceived as a source-indicator for registered financial services, but instead “merely use made in an attempt to reserve a right in the mark until Registrant was actually using the mark in commerce in connection with its financial services.”
The fact that Registrant did not actually change its name to EVERWISE CREDIT UNION until two months after the SOU Deadline supports the finding that it added the tagline incorporating the mark to a single page on its website merely to preserve its right to make bona fide use of the mark in the future, i.e., to merely reserve a right in the mark.* * *… Registrant's bona fide use did not occur by the SOU Deadline. When viewing the procedural history of this case, as well as the evidence of record, it is clear that Registrant had obtained the maximum number of extensions to file its Statement of Use, and was up against a non-extendable deadline to submit its Statement of Use accompanied by a specimen demonstrating bona fide use of the mark in commerce. While Registrant did submit a single document dated on the SOU Deadline that displays the wording EVERWISE CREDIT UNION, Registrant, in its attempts to rebut the prima facie finding of nonuse, curiously did not submit any other documentary evidence displaying use of the wording EVERWISE CREDIT UNION as a source indicator of the registered services, showing use prior to the SOU Deadline. This lack of additional evidence demonstrating use as a source identifier pre-dating the SOU Deadline, viewed in conjunction with the screenshots of Registrant's website advising that Registrant would officially offer its registered financial services under the EVERWISE CREDIT UNION mark after the SOU Deadline, clearly shows that Registrant's use of the EVERWISE CREDIT UNION mark on the submitted specimen was not bona fide in nature but submitted for the purpose of reserving the mark for use at a future date. This is exactly the type of use the statute was designed to avoid.
Thus, the TTAB affirmed that Registrant's Registration No. 7068783 for the mark EVERWISE CREDIT UNION will be cancelled in due course under § 16B(g) of the Trademark Act, 15 U.S.C. § 1066b(g).
The TTABlog noted that the Everwise decision provides “a lengthy and helpful discussion of how reexamination works.”
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