What You Need to Know About USPTO Expungements, Reexaminations and the Trademark Modernization Act

Over the past few years, record numbers of trademark applications have been filed, causing concerns about the integrity of the U.S. trademark registry and the value of the highly-sought-after U.S. trademark registration. In response, Congress passed the Trademark Modernization Act in December of 2020, which gave the USPTO one year to implement new proceedings called "expungement" and "reexamination."  These new procedures came into effect on December 18, and allow third-parties to provide evidence that a registered trademark was not in-use when the applicant said it was, thus canceling the existing registration.

Our guest, Eric Perrott, is a Trademark attorney in D.C. and was the first attorney to file a "petition for expungement" against a trademark registrant that used a doctored stock image in its trademark application. We will discuss with him the implications of this development for brand owners and trademark attorneys, particularly international filers who will need to hire a U.S. based attorney to respond to these proceedings.

Please note, the positions and opinions expressed by the speakers are strictly their own, and do not necessarily represent the views of their employers, nor those of the D.C. Bar, its Board of Governors or co-sponsoring Communities and organizations.

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