The Trademark Modernization Act created two new ex parte procedures – re-examination and expungement. To oversimplify slightly: the former is intended to correct botched or incomplete examination; the latter is an ex parte version of a non-use cancellation action.

The Office Actions generated by these new procedures are unusual in that they have short turnaround times — 3 month response deadlines, extendible once for 1 month. Unsurprisingly, given the current delays the USPTO is seeing across the trademark landscape, progress is slow.

	# Filed	# Deficiencies	# Office Actions	# of Registrant Responses
Dec. 2021 Re-examination Expungement	3 5	0 0	3* 1	0 0
Jan. 2022 Re-examination Expungement	7 15**	2 (2 responses)*** 1	1 1	? 1****
Feb. 2022 Re-examination Expungement	10 6	0 0	0 0	0 0

* All three were basically the same, for variations of the same mark.

** One of the fifteen was withdrawn.

*** One was not instituted at all, without even generating a deficiencies notice. It was submitted by an unrepresented petitioner. Frankly, I’m not sure it was substantially different from others that did get a chance to amend via the deficiency process. The petitioner got a bit of a raw deal.

**** Our one example was a response filed by an unrepresented applicant; the response does not attach an example of use

If you need to file a re-examination or expungement request, the relevant forms are available here. It looks like registrants will use a standard Post-Registration Office Action Response form, but we’ll see if those end up being the same file type or not — none have been filed yet.

Finally, if you need to do research about how others are filing or responding to re-examination or expungement requests, you can do that on TM TKO. In an Office Action search, you can select Document Types that are relevant to Re-Examination or Expungement proceedings: Petition for Expungement/ReExam form, Response to Petition Inquiry-Expunge/ReExam, and 30-day Inquiry Letter to Petitioner. The Registrant’s Office Action responses will also be searchable, whether as a unique file type or batched with normal Post-Registration Office Action Responses remains to be determined.