Cleaning the Register: Expungement, Reexamination, and Letters of Protest After the Trademark Modernization Act
By Casey Scott McKay ·
For seventy-five years the only way to remove a registration that was never used was to file a TTAB cancellation and litigate it. The Trademark Modernization Act of 2020 created two administrative alternatives that cost a fraction as much, require no adversary proceeding, and can be filed anonymously through counsel. This article explains ex parte expungement under 15 U.S.C. 1066a and ex parte reexamination under 15 U.S.C. 1066b - what each covers, the timing windows that determine which one you can use, and why the difference between "never used" and "not used by the relevant date" decides the choice. It covers the new cancellation ground at Section 1064(6), the codification of letters of protest, and the flexible response periods that shortened office action deadlines. It explains what a reasonable investigation actually requires, why the Director's discretion to institute proceedings is broader than most practitioners realize, and what happens to a registration that survives. It closes with the strategic question these tools were built to answer: what to do when a mark you want is blocked by a registration nobody is using.
IP and Technology > Trademarks | Article | Published 7 December 2024 - Updated 13 October 2025 | Casey Scott McKay - marksy.us
Summary. For seventy-five years the only way to remove a registration that was never used was to file a TTAB cancellation and litigate it. The Trademark Modernization Act of 2020 created two administrative alternatives that cost a fraction as much, require no adversary proceeding, and can be filed anonymously through counsel. This article explains ex parte expungement under 15 U.S.C. § 1066a and ex parte reexamination under 15 U.S.C. § 1066b — what each covers, the timing windows that determine which one you can use, and why the difference between "never used" and "not used by the relevant date" decides the choice. It covers the new cancellation ground at Section 1064(6), the codification of letters of protest, and the flexible response periods that shortened office action deadlines. It explains what a reasonable investigation actually requires, why the Director's discretion to institute proceedings is broader than most practitioners realize, and what happens to a registration that survives. It closes with the strategic question these tools were built to answer: what to do when a mark you want is blocked by a registration nobody is using.
Keywords: trademark modernization act · ex parte expungement · ex parte reexamination · 15 usc 1066a · 15 usc 1066b · letter of protest · section 1064(6) · deadwood registrations · nonuse cancellation · reasonable investigation · prima facie case of nonuse · director discretion · post-registration audit · digitally altered specimens · fraudulent specimens · flexible response periods · irreparable harm presumption · register clutter · blocking citation
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