In an expungement proceeding, the USPTO may cancel a trademark registration, in whole or in part, if the evidence of record shows that the registered 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. Trademark Act Section 1066a; Trademark Rule 2.91(a)(1). 

In contrast, 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 on or in connection with some or all of the goods and/or services as of the filing date of the application or an amendment to allege use, or before the deadline for filing a statement of use, as applicable. Trademark Act Section 1066b; Trademark Rule 2.91(a)(2).

Both expungement and reexamination proceedings are ex parte proceedings created by the Trademark Modernization Act of 2020. Common Sense Press Inc. v. Van Sciver, Can. No. 92075375, 2023 TTAB LEXIS 173, at *5 (TTAB 2023) (citing Trademark Act Section 1066a (expungement), 1066b (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 receiving a petition, upon determining that information and evidence supports a prima facie case of nonuse of the registered mark for some or all of the goods or services identified in the registration as of the relevant time period. Id. (citing Trademark Act Sections 1066a(c)(1), 1066b(d)(1), 15 U.S.C. §§ 1066a(c)(1), 1066b(d)(1); 37 C.F.R. § 2.92); see also TRADEMARK MANUAL OF EXAMINING PROCEDURE ("TMEP") § 1716 (May 2024). The relevant time period will vary depending on the type of proceeding instituted and the filing basis of the application leading to the subject registration. See generally TMEP § 1716.02(a).

In response to a notice of institution of an expungement or reexamination proceeding, a registrant may respond to the petition on the merits; delete goods or services at issue; surrender the registration for cancellation; or amend the registration. Trademark Rules 2.93(d)(3), 2.172, 2.173, 37 C.F.R. §§ 2.93(d)(3), 2.172, 2.173. However, “no amendment in the identification of goods or services . . . in a registration will be permitted except to restrict the identification or to change it in ways that would not require republication of the mark.” Trademark Rule 2.173(e); see also TBMP § 1307. 

The TTAB recently affirmed the expungement of two registrations for SMARTLOCK word and design marks (Registration Nos. 5376466 and 5376467) in connection with “Components for air conditioning and cooling systems, namely, evaporative air coolers,” in Class 11.  In re Locus Link USA, Expungement Nos. 2022-100137E and 2022-100138E (TTAB July 1, 2024). 

There was no dispute that the marks were not used with fully manufactured “evaporative air coolers” as the finished goods, but with "refrigerant fittings" for use with HVAC units. The Registrant argued that the identified goods were components for evaporative air coolers. 

The TTAB noted that "use of the word 'namely' . . .  is acceptable only if the words that follow it define and fall within the scope of the introductory wording that precedes 'namely' (e.g., 'clothing, namely, shirts')." 

TMEP § 1402.05(a) instructs applicants that “[c]omponents or ingredients used for the manufacture of other finished products that are sold separately from the finished products [i.e., connectors for air conditioners or evaporative air coolers] are classified in the class of the specified components or ingredients, since the components or ingredients have not yet been transformed into the finished goods.” Id. (emphasis added).

Because the wording “evaporative air coolers” identifies a component for “air conditioning and cooling systems,” the TTAB concluded that "the identification of goods covers evaporative air coolers that are components of air cooling systems" rather than "component parts for evaporative air coolers." The TTAB also noted that other “components” could be classified in different classes such as Class 6 for metal pipe connectors or Class 17 for non-metal pipe connectors.

The attorneys at Thomas P. Howard, LLC are experienced in trademarks nationwide including in Colorado.