As a trademark applicant, encountering a prior registration that obstructs your path to registration is never a pleasant experience (nor for your attorneys who have to inform you about it). The frustration only intensifies when it becomes evident that the registered mark has never been used for the specified goods or services. Until 2021, the sole recourse with the USPTO to address this issue was filing a Petition to Cancel, with the hope that the registrant would not respond, leading to a swift default judgment. Unfortunately, this is not always the case, and a response means expending an appreciable amount of time and money before resolution can be obtained, often through a settlement agreement.

In late 2021, the landscape changed with the enactment of the Trademark Modernization Act of 2020, which brought about two new ex parte proceedings: reexamination and expungement. The goal was to provide faster, more efficient, and less expensive alternatives to contested cancellation proceedings at the Trademark Trial and Appeal Board (the “Board”).

Expungement proceedings, in particular, offer a means to cancel trademarks that have never been used in commerce. “Any party can request cancellation [by the USPTO Director] of some or all of the goods or services in a registration because the registrant never used the trademark in commerce with those goods or services.” This action is available against all types of registrations, but must be requested between three and ten years after the registration date.

Now, after two-and-a-half years of these proceedings, on July 1, 2024, the Board issued its first precedential decision in an appeal of an expungement decision: In Re Locus Link USA.

In July 2022, a third party filed expungement actions against Locus Link USA’s (the “Registrant”) two SMARTLOCK registrations, alleging nonuse of the marks for the specified goods: “components for air conditioning and cooling systems, namely, evaporative air coolers.” The USPTO Director found sufficient evidence of nonuse and proposed cancellation. The Registrant responded with evidence of use in the form of specimens showing connectors for metal tubing and air condition components, arguing that this evidence was sufficient, and had been previously accepted by the USPTO during examination. The USPTO maintained the cancellation, noting that the subject registrations only covered the specific goods following the term “namely” in the identification, here “evaporative air coolers.”

On appeal, the Registrant argued that the SMARTLOCK marks are in use in connection with the goods identified in the registration because the identification of goods covers components for evaporative air coolers. The Board disagreed and affirmed the USPTO’s decision.

Goods and services in an application should “state common names for goods or services, be as complete and specific as possible, and avoid indefinite words and phrases.” TMEP § 1402.03(a), cited in In re Solid State Design Inc., Ser. No. 87269041, 2018 TTAB LEXIS 1, at *18 (TTAB 2018).

Applicants take notice: “the goods or services listed after the term ‘namely’ must further define the introductory wording that proceeds ‘namely’ using definite terms within the scope of the introductory words.” In other words, the goods or services that come after “namely” must specifically define the broader category mentioned before. Essentially, “namely” helps to clarify otherwise vague descriptions.

In this case, the broad category is “components for air conditioning and cooling systems.” The applications were only accepted for registration because they specified “namely, evaporative air coolers.” This means the SMARTLOCK marks cover evaporative air coolers that are components for air cooling systems. It does not cover component parts that go into making evaporative air coolers.

Key Takeaways

1. Grammar Matters. Properly identifying goods and services in an application is vital. The USPTO continues to increase its specificity requirements for identifying goods and services, and applicants need to ensure not only original identifications, but also amendments to identifications proposed by an examiner accurately and correct reflect their goods and services. In Locus Link, was the Board, splitting hairs? Maybe, but the lesson is critically important for obtaining and maintaining trademark registrations.
2. Specimen Acceptance Isn’t Conclusive. The acceptance of specimens by the USPTO does not control the ultimate question of use. Although not a new concept, one to keep in mind. It is more important to have multiple records of proper and consistent trademark use than to rely on a single specimen. It is wise to retain an attorney with experienced eyes to review your use specimens prior to filing for both registration and for maintenance of your registrations.
3. File for New Marks as Necessary. While the SMARTLOCK marks were never in use for the goods, nonuse or lack of coverage can happen. Businesses expand and evolve over the years and so too should the portfolio of trademark registrations. It is important to occasionally audit your trademark portfolio to look for any gaps in coverage for certain marks and certain goods and services. Do not just think you have proper coverage, be sure so you are in the best offensive and defensive position possible for your brand. You never know who else is out there, looking to use your mark. If your registrations are in not order, your marks are vulnerable.

It is still early days for these new ex parte proceedings, but the hope is that they will prove a useful tool moving forward. This precedential decision although not groundbreaking does provide a good overview of the relatively new expungement proceeding and some good reminders for trademark owners.