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TTAB Issues 1st Precedential Opinion in a Trademark Expungement Proceeding


On July  1, 2024, the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO) published In re Locus Link USA, its first precedential decision from a fairly new kind of proceeding, called an “expungement” proceeding. In so doing, the TTAB provided a valuable lesson about the importance of goods/services recitations in federal trademark registrations. As explained by this author in a September 2022 article, both “expungement” and “reexamination” proceedings became available on December 21, 2021 as a result of the Trademark Modernization Act of 2020. That article, and the linked article block quoted at the bottom of this post, explain the differences between the two types of proceedings, but they are both structured as ex parte proceedings designed to streamline the process of weeding out federal trademark registrations that may be partially or wholly invalid due to nonuse of the registered mark in connection with some or all of the goods and/or services recited in the federal registration. 

Expungement / Reexamination Statistics

The block quote at the end of this post suggests that expungement and reexamination proceedings are functioning as intended, although the USPTO continues to enforce the statutory requirement that petitions include sufficient evidence to establish a prima facie case of nonuse as of the dates relevant to each type of proceeding, in order for the USPTO to institute either proceeding. See 15 U.S.C. § 1066a(c)(1) (for expungement proceedings) and § 1066b(d)(1) (for reexamination proceedings). Under these statutes, any person can file an expungement or reexamination petition, and such proceedings may even be initiated by the USPTO Director, at the Director's own initiative. As of the time of this writing, according to the USPTO's “Trademark Decisions and Proceedings” web page for expungement and reexamination proceedings, a combined total of 3722 such petitions have been filed, broken down as 2845 reexamination petitions and 877 expungement petitions. Of that combined total, the USPTO initiated 1293 proceedings (114 of them initiated under the Director's own initiative), for a 34.74% initiation rate. Of those 1293 initiated proceedings, 520 of them resulted in either partial or complete cancellation of a federal trademark registration, for a 40.2% success rate for initiated proceedings. These statistics continue to stress the importance of presenting sufficient evidence of nonuse when filing an expungement or reexamination petition. The  September 2022 article discusses regulatory guidelines for conducting “a reasonable investigation of nonuse,” including evidentiary sources that a petitioner may consult.

The Facts and Arguments in Locus Link

Locus Link USA ("LLU") owned two federal registrations for the mark SMARTLOCK, one for the word itself and one for a composite mark reciting that word in a stylized form as part of a logo (together, “the SMARTLOCK Marks”). Both registrations recited the covered goods as “Components for air conditioning and cooling systems, namely, evaporative air coolers.”

In July 2022, an unnamed third party filed expungement petitions directed to both of LLU's federal trademark registrations, alleging that LLU never used the SMARTLOCK Marks for the recited goods. The USPTO found sufficient evidence of nonuse and issued office actions proposing cancellation of both of LLU's registrations.

LLU responded to the office actions by submitting what it contended to be sufficient evidence of use of its SMARTLOCK Marks, namely: (1) photographs of connectors for metal tubing and of an open cabinet showing air conditioning system components including the connectors, and (2) a drawing showing a perspective view of tubing connections between an “indoor unit” and an “outdoor unit.” LLU argued that this evidence showed sufficient use of the SMARTLOCK Marks because: (1) the recited goods are “[c]omponents for air conditioning and cooling systems,” which include the depicted tube connectors, and (2) the USPTO examiner of LLU's trademark registration applications accepted the submitted evidence as sufficient specimens of use when allowing those applications to issue as LLU's federal trademark registrations.

The USPTO answered by interpreting the description of goods as covering only the goods following the word “namely,” i.e., “evaporative air coolers.” It then concluded that LLU showed use of its SMARKLOCK Marks only for the connectors, and not for evaporative air coolers. As a result, the USPTO maintained its decision to cancel both of LLU's registrations. LLU appealed that decision to the TTAB.

The TTAB's Reasoning in Locus Link

The TTAB agreed with the USPTO that LLU did not use “the SMARTLOCK Marks in commerce in connection with fully-manufactured ‘evaporative air coolers.’” The decisive question then came down to whether the scope of the recitation of goods in LLU's federal registrations could be properly interpreted as broadly covering all “[c]omponents for air conditioning and cooling systems,” or instead was more narrowly restricted to just completed ”evaporative air coolers."

Resolving the question in favor of the narrower interpretation, the TTAB explained (with citations omitted):

The goods or services listed after the term "namely" must further define the introductory wording that precedes "namely" using definite terms within the scope of the introductory wording. In other words, use of the word "namely" in an identification of goods or services is acceptable only when the words that follow it define and fall within the scope of the introductory wording that precedes "namely" (e.g., "clothing, namely, shirts").

The TTAB also quoted a section from the Trademark Manual of Examining Procedure requiring that the identification for any components of finished products “should leave no doubt that the mark refers only to the component or ingredient and not to the entire product.” In rejecting LLU's interpretation, the TTAB reasoned that LLU's broader interpretation would have rendered the description of goods indefinite in violation of the quoted section, leaving unspecified the types of “components” purportedly covered by LLU's registrations. 

The final paragraph of Locus Link addressed LLU's second argument, concerning the USPTO's acceptance of LLU's specimens of use during examination of LLU's trademark applications. The TTAB rejected that argument as well, indicating that neither it nor the USPTO Director is bound by the decisions of a trademark application examiner:

Neither the Director nor the Board are bound by prior decisions of Examining Attorneys in a subject application that matured into a registration, and the Examining Attorney's acceptance of Applicant's identification and supporting specimens does not preclude evaluation of Applicant's use in this expungement proceeding. Moreover, the acceptance of specimens by the Examining Attorney does not control the ultimate question of use. Cf. Century 21 Real Estate Corp. v. Century Life of Am., Opp. No. 91075090, 1989 TTAB LEXIS 6, at *3 (TTAB 1989) ("[T]he mere acceptance of specimens by the Examining Attorney does not mandate a finding by us that service mark usage was made.").

Takeaways from Locus Link

Locus Link exemplifies how an expungement proceeding can accomplish its goal to provide a streamlined means of partially or completely canceling a federal trademark registration due to nonuse of the registered mark for some or all of the goods and/or services recited in the registration.

Even more importantly, Locus Link underscores the importance of properly phrasing one's description of goods and services in an application to federally register a trademark or service mark. This importance manifests itself in three separate additional takeaways.

First, the use of “namely” in such a description is frequently suggested by an examiner during examination of the application if he/she believes an original description to be deficient or indefinite in some manner. Therefore, applicants must be aware that the scope of goods or services in any registration that ultimately issues will be restricted to whatever follows the word “namely.” 

Second, the phrase “components of [a finished product]” by itself will not suffice to cover all components of the finished product - the components to be identified by the mark must be listed with greater specificity. 

Third, just because a trademark application issues into a registration does not mean that its goods/services description will be immune from future scrutiny in a TTAB proceeding. If a registrant believes that the goods/services description(s) in one or more owned registrations might not survive such scrutiny, the registrant can file a “Section 7 Request” to amend each affected registration, so long as each proposed amended goods/services description will neither add new goods/services to the original recitation, and so long as the amended description will not have a broader scope than the original description.

Consultation with an experienced trademark practitioner can help address these and other questions that may arise in pursuing and maintaining a federal trademark registration.

The first procedure, ex parte expungement, allows a petitioner to ask the USPTO to cancel a registration for some or all of the goods or services because the mark has never been used in commerce in the U.S. for what was described in the registration. The second, ex parte reexamination, allows for the invalidation of a registration that was not used in U.S. commerce by a certain "relevant date": the application filing date, the filing date of an amendment to allege use, or before the deadline for filing a statement of use. A little over a year since their implementation, the USPTO's new mechanisms have provided an efficient and relatively economical option for getting rid of some of those unused trademarks — but that's if petitioners can convince the agency to institute a proceeding, attorneys told Law360.


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