Trademark Abandonment Evidence Checklist: Building or Breaking the Non-Use Case

By Casey Scott McKay · 2024-08-28

This checklist is the working document for a trademark non-use dispute, usable from either chair, and it assumes the doctrine rather than teaching it. Ten phases run from intake to endgame: fixing the client's objective, dating the non-use window good by good, running an investigation that survives a USPTO institution decision, preserving evidence before the registrant's website changes, choosing among ex parte expungement, reexamination, a Section 14(3) cancellation, a Section 14(6) never-used claim and a district court counterclaim, pleading each of them, running sales-record discovery, deciding whether an expert earns its fee, and assembling the registrant's rebuttal file. Every item names the rule, the form, the fee, the field, or the office, with the specific way practitioners get it wrong. One invented matter — a Bend, Oregon bootmaker blocked by an eight-year-old apparel registration for goods the registrant never sold — runs through all ten phases so the reader can see what a finished file looks like. It closes with the mistakes that cost the most money and a consolidated deadline table covering maintenance filings, TMA response windows, and Board dates.

IP and Technology > Trademarks | Checklist | Published 28 August 2024 - Updated 11 March 2025 | Casey Scott McKay - marksy.us

Summary. This is the working document for a trademark non-use dispute, usable from either chair. Ten phases take you from intake to endgame: fixing the client's objective, dating the non-use window good by good, running an investigation that survives a USPTO institution decision, preserving evidence before the registrant's website changes, choosing among ex parte expungement, reexamination, a Section 14(3) cancellation, a Section 14(6) never-used claim and a district court counterclaim, pleading each of them, running sales-record discovery, deciding whether an expert earns its fee, and assembling the registrant's rebuttal file. Every item names the rule, the form, the fee, the field, or the office, with the specific way practitioners get it wrong. One invented matter — a Bend, Oregon bootmaker blocked by an eight-year-old apparel registration covering goods the registrant never sold — runs through all ten phases, and a consolidated deadline table closes it out.

Keywords: abandonment evidence checklist · non-use investigation · three-year presumption · intent to resume use · ex parte expungement · ex parte reexamination · ttab cancellation · reasonable investigation · wayback machine evidence · litigation hold · notice of reliance · rule 30(b)(6) deposition · excusable non-use · section 8 declaration · forensic accountant · revival file · partial cancellation · deadwood registration · forum selection · standard of proof

What this checklist is for

Work it top to bottom and you finish with one of three things: a $400 ex parte petition that gets instituted, a pleaded cancellation with a discovery plan behind it, or a registrant's rebuttal file that makes the other side go away. It serves both sides, because the evidence is the same and only the direction of the arrow changes. Items marked [C] are the challenger's, [R] the registrant's, unmarked items both.

Who should use it. Prosecution counsel whose application drew a Section 2(d) refusal over something that looks dead; litigators pleading abandonment as a defense and counterclaim; in-house counsel deciding whether to prune an identification before someone prunes it for them. The doctrine is in Use It or Lose It; the reasoning and model language are in Proving and Defeating Trademark Abandonment. This re-teaches neither.

Before you start. Have the registration number and a complete TSDR file wrapper download saved with its retrieval date; your client's serial number and any office action; a docket entry for the registration's next maintenance window; and authority to spend $2,500 to $9,000 on investigation before anyone files. If you act for the registrant, get the sales ledger — not a summary of it.

Worked example. Ridgeline Provisions, LLC, a Bend, Oregon bootmaker, filed an intent-to-use application for HARROW in Class 25 for "footwear; socks" on 3 March 2024. On 18 June 2024 the examining attorney refused under Section 2(d), citing HARROW & BELL, Reg. No. 5,012,345, registered 2 August 2016 from a Section 1(a) application, Class 25, "clothing, namely, jackets, shirts, pants, hats, gloves, socks, and footwear." Harrow & Bell has only ever sold jackets and hats, and has sold nothing since March 2021.

| Phase | What it produces | Effort | |---|---|---| | 1 — Intake | The outcome the client needs, and the cheapest route to it | 1–3 hrs | | 2 — Date the window | A use timeline, good by good | 2–4 hrs | | 3 — Investigation | A source-by-source log and an indexed exhibit set | 10–25 hrs + $2,500–$9,000 | | 4 — Preservation | Authenticated captures, hashes, a litigation hold | 3–6 hrs | | 5 — Forum | A vehicle, and the calendar constraint that chose it | 2–4 hrs | | 6 — Pleading | A petition, or an answer with counterclaim, on file | 8–20 hrs | | 7 — Discovery | Sales records, a revival-file inventory, admissions | 40–120 hrs | | 8 — Experts | A short list, or a defensible decision to use none | 4–30 hrs | | 9 — Defense package | The rebuttal file and the deletion strategy | 15–40 hrs | | 10 — Endgame | Judgment, settlement, or a docketed next window | 5–15 hrs |

Phase 1 — Intake and objective

[ ] Write in one sentence what the registration is actually doing to your client — blocking an application, backing a demand letter, or nothing yet.
- Why. The vehicle follows from the objective. A registration in a class your client may enter in three years is not a problem yet, and 15 U.S.C. § 1064(3) lets you attack it whenever you like.
- Trap. "Let's cancel it" is not an objective. It is a $60,000 answer to a question nobody asked.
[ ] Decide whether you need the whole registration gone or only specific goods, listed verbatim from the identification.
- Authority. Ex parte cancellation reaches only the goods for which non-use is shown, 15 U.S.C. §§ 1066a(g), 1066b(g); the Board cancels in part under § 1064(3).
[ ] Price the three routes that never mention abandonment: a no-likelihood-of-confusion argument, waiting out the registrant's next Section 8 and Section 9 window, and a consent or coexistence agreement. Calendar that window first — a registrant that has sold nothing for three years often lets the registration lapse, which costs you nothing.
- Trap. A no-confusion argument is cheap now and quotable against you forever when you enforce your own mark. See the Office Action Response Checklist. A genuine consent carries no quality-control duty — Trademark Coexistence Agreement Template.
[ ] [C] Run the counterattack analysis: if your client is already selling, price an injunction against the product line and have a demand-letter response drafted before you file. Filing tells a dormant owner exactly how much it stands to lose. See the Pre-Litigation Enforcement Checklist and Responding to a Cease-and-Desist Letter.

Worked example. Ridgeline needs "socks" and "footwear" off Reg. No. 5,012,345. It does not need jackets and hats removed, and asking for them buys a fight with a registrant holding a colorable priority position over a client that has already tooled a sock line.

Phase 2 — Date the non-use window

[ ] Build a use timeline for each good in the identification — first evidence of use, last evidence of use, ever used at all, the window you could plead — with the filing basis and registration date at the top.
- Why. Basis and age eliminate more options than the merits do. Reexamination reaches only Section 1(a) and 1(b) registrations under five years old, 37 C.F.R. § 2.91(a)(2), (b)(2); expungement runs from the third anniversary to the tenth, § 2.91(b)(1).
[ ] Fix the relevant date for any reexamination theory: the filing date for a Section 1(a) application, or for Section 1(b) the later of the amendment to allege use or the final statement-of-use deadline. 15 U.S.C. § 1066b(b).
- Trap. Practitioners plead "not in use" without naming the date the statute makes dispositive. See the Statement of Use Filing Checklist.
[ ] Read every specimen against every good, and note which goods no specimen has ever covered.
- Authority. TMEP § 904.04(a)(ii) on digitally altered specimens — pixelation at the mark's edges, floating text, inconsistent shadows, images identical to third-party product photography. See Specimen Refusals.
[ ] Confirm the window is three genuinely consecutive years, and note anything that resets it.
- Trap. One documented bona fide sale in month thirty resets the clock. Small sales by a genuinely small business are not token use, Perry v. H.J. Heinz Co. Brands, L.L.C., 994 F.3d 466, 475 (5th Cir. 2021), and in the Ninth Circuit abandonment requires complete cessation, Electro Source, LLC v. Brandess-Kalt-Aetna Group, Inc., 458 F.3d 931, 938-40 (9th Cir. 2006).
[ ] Check whether use on related goods carries the discontinued ones, and whether the mark has merely been modernized.
- Authority. Related goods can preserve rights, Marshak v. Treadwell, 58 F. Supp. 2d 551, 574-75 (D.N.J. 1999), but promotional merchandise cannot, Emergency One, Inc. v. American FireEagle, Ltd., 228 F.3d 531, 539 (4th Cir. 2000). Whether a modernized mark is a legal equivalent is a fact question, Hana Financial, Inc. v. Hana Bank, 574 U.S. 418, 422-24 (2015).

Worked example. Jackets and hats: first use September 2015, last use March 2021. Shirts, pants, gloves, socks, footwear: no evidence of use, ever. Registered 2 August 2016 on Section 1(a) — which kills reexamination (that window closed 2 August 2021) and puts a hard stop on expungement at 2 August 2026.

Phase 3 — The investigation

[ ] Open an investigation log now: one row per source, recording who searched, how, when, and what came back.
- Why. For an ex parte petition the log is the petition. 37 C.F.R. § 2.91(c)-(d) require a source-by-source description of a "reasonable investigation" — a bona fide, appropriately comprehensive attempt calculated to return information from sources where evidence of use would normally be found, with illustrative sources at § 2.91(d)(2).
[ ] Work the USPTO record first: file wrapper, every specimen, other registrations the owner holds, prior non-use refusals, prior TMA outcomes, and the Assignment Center chain of title. Free, and examiners look for portfolio-wide patterns.
[ ] Retrieve Internet Archive captures of the shop, product and stockist pages at six-to-twelve-month intervals across the whole relevant period, and count them.
- Trap. Current non-use proves nothing about past non-use. A petition built on today's homepage is the commonest reason institution is refused — two in five third-party petitions are — and there is no appeal, 15 U.S.C. §§ 1066a(d), 1066b(e).
[ ] Search marketplaces and the registrant's own named stockists, taken from the archived captures rather than today's site. An investigator who calls the three shops the 2019 site listed as dealers beats one who searches Amazon.
[ ] Pull the commercial data most practitioners skip: import bill-of-lading records for the last inbound shipment by month, domain and DNS history, app-store listing and removal dates, ad-transparency archives showing when paid advertising stopped, and marketplace listing history.
[ ] Check the public-record layer: Secretary of State status and annual-report delinquencies, UCC-1 filings, tax liens, WARN Act notices, trade press for a discontinuation or name-change announcement, and dockets for sworn statements the registrant has made about its use elsewhere.
- Authority. A public name-change campaign supports abandonment, Equitable National Life Insurance Co. v. AXA Equitable Life Insurance Co., 434 F. Supp. 3d 1227 (D. Utah 2020), though an announcement alone is a basis for the inference rather than proof of it, Cumulus Media, Inc. v. Clear Channel Communications, Inc., 304 F.3d 1167, 1178 n.17 (11th Cir. 2002).
[ ] Commission an investigator purchase attempt, under written scope, only after the desk research is done.
- Authority. Gidatex, S.r.L. v. Campaniello Imports, Ltd., 82 F. Supp. 2d 119, 122-24 (S.D.N.Y. 1999) declined to exclude evidence from investigators posing as customers who did not interrogate anyone about the litigation. The limits are ABA Model Rules 4.2, 4.3, 5.3 and 8.4(c), and 37 C.F.R. §§ 11.402, 11.804.
- Trap. Written scope every time: buy the product, ask what a customer would ask, do not identify the client, do not speak to counsel or executives or anyone who mentions a lawyer, and write the report the same day.
[ ] Narrow the petition if the investigation finds use on some goods. 37 C.F.R. §§ 11.18(b)(2), 11.303(d) — you do not get to leave the bad exhibit out.

Phase 4 — Evidence preservation

[ ] Capture before you file, and submit the registrant's key URLs to the Internet Archive's Save Page Now first, so a dated third-party capture exists independent of your screenshots. Assume the site changes within a week of the registrant learning someone is looking; the most valuable exhibit in a non-use case is the page that no longer exists.
[ ] Save each capture three ways — full-page screenshot showing URL and access date, the underlying PDF, and a SHA-256 hash in the log — and request the Archive's records-custodian affidavit for anything headed to district court.
- Authority. Fed. R. Evid. 901(b)(1), 902(11), 902(13), 902(14). Courts have also taken judicial notice of Archive captures under Fed. R. Evid. 201. Marten Transport, Ltd. v. PlattForm Advertising, Inc., 184 F. Supp. 3d 1006, 1009 (D. Kan. 2016).
[ ] For the Board, confirm every printout shows the URL and access date — that is what makes it admissible by notice of reliance. 37 C.F.R. § 2.122(e)(2); Safer Inc. v. OMS Investments Inc., 94 U.S.P.Q.2d 1031, 1039 (T.T.A.B. 2010).
[ ] Assign collection to a paralegal or client employee, never to trial counsel.
- Why. Whoever collected may have to testify to it, and the alternative is choosing between an unauthenticated exhibit and disqualifying your lead counsel. Protocols: Evidence and Expert Witness Toolkit.
[ ] [R] Issue a written litigation hold the day you learn of a petition, covering accounting systems, the brand's shared drive, design files, factory correspondence, board materials, and personal devices of anyone who touched the relaunch.
- Authority. Fed. R. Civ. P. 37(e) in court; the Board reaches the same result through 37 C.F.R. § 2.120(h).
- Trap. Suspend auto-deletion on chat and email before you send the memo, not after — and leave document metadata untouched, because creation dates are the first thing competent opposing counsel asks for.

Phase 5 — Forum and vehicle

[ ] Answer five gating questions in order: are the parties already in a dispute; is the theory never-used or used-and-stopped; how old is the registration and on what basis; do you need discovery; do you need a result that binds.
[ ] Match the answers to a vehicle.

| Registration age | Filing basis | Available | |---|---|---| | Under 3 years | Any | § 1064(3) only, rarely viable this early | | 3–5 years | § 1(a) or § 1(b) | Expungement, reexamination, § 1064(6), § 1064(3) | | 3–5 years | § 44(e) or § 66(a) | Expungement (excusable non-use available), § 1064(6), § 1064(3) | | 5–10 years | Any | Expungement, § 1064(6), § 1064(3) — reexamination gone | | Over 10 years | Any | § 1064(6), § 1064(3) — expungement gone |

[ ] Choose deliberately between preponderance and clear-and-convincing forums, and write the reason in the file.
- Authority. Preponderance in the TTAB and the Federal, Fourth and Seventh Circuits, On-Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080, 1087 (Fed. Cir. 2000). Clear and convincing in the Eighth Circuit and many district courts on a forfeiture rationale, Community of Christ Copyright Corp. v. Devon Park Restoration Branch, 634 F.3d 1005, 1010 (8th Cir. 2011).
- Why. The same record produces opposite judgments. See Federal Court vs. TTAB and Opposition vs. Cancellation.
[ ] Price the estoppel before filing any ex parte petition.
- Authority. A registrant that rebuts the prima facie case in an expungement is immune from further expungement as to those goods, 15 U.S.C. § 1066a(j)(2); rebutting a reexamination forecloses both, § 1066b(j)(2). No parallel proceeding may run against the same registration and goods, 37 C.F.R. § 2.92(d).
- Trap. A weak petition does not merely fail. It immunizes the registration against the strong petition you would have filed next year.
[ ] Go to the Board if you need discovery, and to district court if you need non-party documents.
- Authority. No Rule 45 document subpoenas issue at the Board; you can compel a non-party testimony deposition by subpoena from the district court where the witness resides, 35 U.S.C. § 24; TBMP § 404.03(a)(2). And in court, 15 U.S.C. § 1119 creates no standalone jurisdiction — a cancellation claim needs a companion Lanham Act claim, Ditri v. Coldwell Banker Residential Affiliates, Inc., 954 F.2d 869, 873-74 (3d Cir. 1992).

Worked example. Reexamination is gone. Expungement reaches all five never-used goods for $400 per class until 2 August 2026. A Section 14(3) petition would also reach jackets and hats, which Ridgeline does not need. The call: file the expungement petition, stay out of the Board, re-argue the refusal after cancellation. Roughly $9,000 instead of roughly $110,000.

Phase 6 — Pleading

[ ] [C] Ex parte route. File through the USPTO's electronic filing system with the $400-per-class fee, 37 C.F.R. § 2.6(a)(26)-(27), identifying the registration, the proceeding type, and each challenged good verbatim. 15 U.S.C. §§ 1066a(b), 1066b(c); 37 C.F.R. § 2.91(c).
[ ] [C] Draft the verified statement as numbered investigation paragraphs — a date for every act, the method, the coverage, an exhibit tied to specific goods — then a short factual basis, and attach an index mapping each exhibit to each challenged good. Do not argue inside the investigation paragraphs.
- Trap. A hundred-page dump of general web results reads as padding and invites non-institution. So does an index saying "Exhibits D-1 to D-14, website captures" without saying which good each capture disproves.
[ ] [C] Board route. File through ESTTA with the $600-per-class fee, 37 C.F.R. § 2.6(a)(16). The Office, not you, notifies the registrant. § 2.111(b).
[ ] [C] Plead entitlement to a statutory cause of action with facts, and attach the office action citing the registration.
- Authority. Lexmark International, Inc. v. Static Control Components, Inc., 572 U.S. 118, 129-34 (2014), applied to the Board in Corcamore, LLC v. SFM, LLC, 978 F.3d 1298, 1303-06 (Fed. Cir. 2020). Citation against a pending application suffices, Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 1029 (C.C.P.A. 1982); a demand letter asserting the registration also counts, Miller v. Miller, 105 U.S.P.Q.2d 1615 (T.T.A.B. 2013).
[ ] [C] Plead the Section 14(3) abandonment count and the Section 14(6) never-used count in the alternative, with month-level dates.
- Why. The never-used count requires no proof of intent and costs nothing to add. A pleading that names a month reads as investigated; "for more than three years" reads as speculative.
- Trap. Abandonment is not fraud, so Fed. R. Civ. P. 9(b) does not apply — but if you also plead fraud on the Section 8 declaration it does, and you must prove subjective intent to deceive by clear and convincing evidence, In re Bose Corp., 580 F.3d 1240, 1243-45 (Fed. Cir. 2009). Plead it only with a document in hand. See Pleading and Proving Trademark Fraud and the Trademark Integrity Toolkit.
[ ] [C] Never plead abandonment as an affirmative defense to a pleaded registration at the Board.
- Authority. Impermissible collateral attack, 37 C.F.R. § 2.106(b)(3)(i)-(ii). Use a counterclaim. It is a valid defense against asserted common-law rights, Giersch v. Scripps Networks, Inc., 90 U.S.P.Q.2d 1020, 1023 (T.T.A.B. 2009).
[ ] [C] District court route. Plead it three ways — affirmative defense under Fed. R. Civ. P. 8(c), counterclaim for cancellation under 15 U.S.C. § 1119, and where supportable a declaratory judgment under 28 U.S.C. §§ 2201-2202 — with jurisdiction through 28 U.S.C. § 1338 and 15 U.S.C. § 1121.
- Why. Abandonment defeats an incontestable registration, 15 U.S.C. § 1115(b)(2). Section 15 buys a great deal, but not this.
[ ] Keep your own application alive on its own clock; request suspension only once a proceeding is instituted. Nothing about a pending expungement pauses your response deadline. See The 3-Month Office Action Deadline.

Phase 7 — Discovery

[ ] Treat abandonment discovery as sales-record discovery. Everything else corroborates.
[ ] Raise the standard of proof at the Rule 26(f) or Board discovery conference, in writing, and again in your first substantive brief.
- Why. Courts resolve it once and then treat it as settled, and the substantive standard already governs at summary judgment. Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 254-55 (1986).
[ ] Propose Accelerated Case Resolution, or the Board's expedited handling of abandonment- and non-use-only cancellations, at the discovery conference.
- Authority. TBMP § 702.04. Abandonment is an unusually good ACR candidate — documentary facts, few witnesses, both sides wanting out. Confirm the current status of any expedited pilot before relying on it.
[ ] Serve interrogatories inside the 75-count limit, 37 C.F.R. § 2.120(d), including one that forces a dated inventory of the revival file.
- Why. "Identify each document created between March 2021 and the present describing any plan, budget, forecast, timeline or proposal to resume sales under the mark, and for each state its date of creation and author" decides the case. It fixes the revival file at a date certain, before hindsight can supplement it.
[ ] Serve requests for production inside the 75-count limit, § 2.120(e): ledgers and sales journals by SKU, purchase orders and vendor invoices, bills of lading and customs entries, board minutes and management decks, retailer and licensee correspondence, all website versions, all specimens and their drafts, everything supporting the last Section 8 declaration, and the litigation hold notice itself.
[ ] Serve requests for admission, § 2.120(i) — the highest value per dollar here. "Admit that no document created before 1 January 2024 describes a plan to resume sales of any good under the Registered Mark" costs one line and either wins the intent element or surfaces a document you did not have.
[ ] Notice a Rule 30(b)(6) deposition on five narrow topics: annual sales of each good; the decision to suspend or discontinue; every step toward resumption and the documents reflecting each; the preparation and factual basis of the Section 8 declaration, good by good; and document retention and the search performed here.
- Trap. Topic four turns a partial-abandonment case into something worse for the registrant. Ask who looked at socks before someone swore to use on socks. See the Trademark Fraud Claim and Self-Audit Checklist.
[ ] Plan Board trial evidence during discovery, not at trial.
- Authority. Interrogatory answers and admissions come in by notice of reliance; documents produced in response to requests for production generally do not, and need testimony or a stipulation, 37 C.F.R. § 2.120(k)(3)(i)-(ii). Testimony may come by declaration subject to oral cross, § 2.123(a)(1). The standard protective order applies automatically, § 2.116(g). See TTAB Discovery and the Protective Order.
[ ] Diary the motion-to-compel cutoff — before the first pretrial disclosures, § 2.120(f)(1) — and the summary judgment window, after initial disclosures and before that same deadline, § 2.127(e)(1).

Phase 8 — Experts

[ ] Start from the presumption that you need none, and justify each expert in writing against the two statutory elements. Abandonment is proved with ledgers, captures and admissions; most abandonment experts are an expensive way to repeat the documents.
[ ] Retain a forensic accountant when the registrant claims sales it cannot tie to a general ledger, or when the "sales" look like keep-alive shipments.
- Why. The accountant reconciles claimed revenue to the ledger, tests whether shipments were priced and paid, and prepares the Fed. R. Evid. 1006 summary a fact witness cannot.
- Authority. Token shipments made to preserve rights are not ordinary-course use. Exxon Corp. v. Humble Exploration Co., 695 F.2d 96, 100-01 (5th Cir. 1983); Procter & Gamble Co. v. Johnson & Johnson Inc., 485 F. Supp. 1185 (S.D.N.Y. 1979), aff'd, 636 F.2d 1203 (2d Cir. 1980).
[ ] Retain a digital forensics examiner when the revival file may have been assembled after service. Timestamps, cloud version history and EXIF data separate a Crash Dummy record from a manufactured one. Crash Dummy Movie, LLC v. Mattel, Inc., 601 F.3d 1387, 1391-92 (Fed. Cir. 2010).
[ ] Retain an industry expert only to calibrate the "reasonably foreseeable future," and only with product-lifecycle data behind the opinion.
- Authority. Foreseeability is industry-specific: a fire apparatus manufacturer may reasonably take five or six years, Emergency One, 228 F.3d at 537, where an app or a snack brand gets far less.
- Trap. An industry expert who offers a legal conclusion about abandonment will be struck, and will cost you credibility on everything else.
[ ] Decline the survey unless a companion claim needs one.
- Authority. Residual consumer recognition does not preserve rights. General Motors Corp. v. Aristide & Co., 87 U.S.P.Q.2d 1179, 1184 (T.T.A.B. 2008). If genericness or secondary meaning rides along, see the Trademark Survey Design and Challenge Checklist and Commissioning and Attacking a Trademark Survey.
[ ] Diary disclosures — Fed. R. Civ. P. 26(a)(2)(B) reports on the court's schedule, expert disclosure thirty days before the close of Board discovery, 37 C.F.R. § 2.120(a)(2)(iii) — and test every opinion against Fed. R. Evid. 702 as amended effective 1 December 2023, under which the proponent must show by a preponderance that the opinion reflects a reliable application of the methodology. Daubert v. Merrell Dow Pharmaceuticals, Inc., 509 U.S. 579 (1993).

Phase 9 — The defense package

[ ] [R] Find the sales before conceding anything, and run the ledger yourself. One documented bona fide sale inside the alleged window collapses the presumption. Look for warranty replacements, sample and employee-store sales, wholesale closeouts, and international shipments touching United States commerce.
[ ] [R] Assemble the contemporaneous revival record in date order: tech packs and CAD files with file-system dates, factory quotations, trade-show badges, board minutes deciding to pause rather than retire, budget lines, retailer emails, recorded assignments.
- Authority. This rebutted eight years of non-use in Crash Dummy, 601 F.3d at 1391-92, and is what Peavey could not produce in Adamson Systems Engineering, Inc. v. Peavey Electronics Corp., 2023 U.S.P.Q.2d 1293 (T.T.A.B. 2023).
[ ] [R] Draft the declaration so testimony comes last: external cause, decision to pause, continuous documented effort, a dated commercial commitment, and only then the statement of intent.
- Trap. The declaration that loses contains only the statement of intent, in more words. Bare assertions do not survive summary judgment, ITC Ltd. v. Punchgini, Inc., 482 F.3d 135, 149-51 (2d Cir. 2007), and owner testimony alone is insufficient, Rivard v. Linville, 133 F.3d 1446, 1449-50 (Fed. Cir. 1998).
[ ] [R] Classify the excuse honestly as external or internal before asserting it.
- Authority. Works: a strike, Sterling Brewers, Inc. v. Schenley Industries, Inc., 441 F.2d 675, 680 (C.C.P.A. 1971); depressed markets making sales unprofitable, Star-Kist Foods, Inc. v. P.J. Rhodes & Co., 769 F.2d 1393, 1396 (9th Cir. 1985). Fails: withdrawing a product that was not selling, Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575, 1581 (Fed. Cir. 1990). And an excuse without intent to resume once the obstacle clears is no defense at all, Silverman v. CBS Inc., 870 F.2d 40, 47 (2d Cir. 1989).
[ ] [R] Decide the deletion strategy good by good, and delete early. In an ex parte proceeding deletion takes immediate effect and moots the proceeding as to those goods, 37 C.F.R. § 2.93(d); a partial deletion offered in month one costs a tenth of one ordered in month thirty. See the Goods and Services Identification Checklist.
- Trap. At the Board you cannot simply amend. A registration involved in a cancellation may not be amended except with the adversary's consent and Board approval, 37 C.F.R. § 2.133(a) — and voluntary surrender without the petitioner's written consent produces judgment against you, § 2.134(a).
[ ] [R] At maintenance time choose among a truthful use declaration, a truthful deletion, and a supported excusable non-use claim stating when use stopped, when it will resume, the specific facts, and the steps being taken. 37 C.F.R. § 2.161(a)(6)(ii); TMEP § 1604.11; Section 71 for Madrid registrations, 15 U.S.C. § 1141k. See Filing a Section 8 Declaration and the Section 8 Declaration Template.
- Trap. The declaration is a public admission of the date use stopped — the first element of the challenger's case, delivered by you, sitting in TSDR forever. Acceptance is not a merits finding; a third party can petition to cancel the following week.
[ ] [R] Prepare for the post-registration audit, which requires proof of use for two additional goods per class, and budget the per-class deletion fee if you cannot substantiate them. 37 C.F.R. § 2.161(b)-(c); confirm current amounts at § 2.6.
[ ] [R] Audit your own licensing and chain of title before the challenger does. Licensed use inures to the owner only where the owner controls quality, 15 U.S.C. § 1055; if it does not, the challenger has a stronger claim than non-use, Barcamerica International USA Trust v. Tyfield Importers, Inc., 289 F.3d 589, 596-98 (9th Cir. 2002). A mark assigned without the goodwill of the business is void, § 1060(a)(1), and an already-abandoned mark cannot be validly assigned at all, Parfums Nautée Ltd. v. American International Industries, 22 U.S.P.Q.2d 1306 (T.T.A.B. 1992). See Naked Licensing, the Trademark License Quality Control Checklist, and the Trademark Due Diligence Checklist.
[ ] [R] Take the free procedural defenses: move for involuntary dismissal if the petitioner takes no testimony, 37 C.F.R. § 2.132(a), and hold the petitioner to a burden of persuasion that never shifts.

Phase 10 — Endgame

[ ] Re-run priority the day you win, because an abandonment finding is not a priority finding.
- Authority. If the registrant abandoned and then resumed bona fide use before your client's first use, the registrant wins on priority anyway. General Cigar Co. v. G.D.M. Inc., 988 F. Supp. 647, 659 (S.D.N.Y. 1997). Document your own first use to the standard in the Common-Law Priority Evidence Checklist and Establishing and Proving Common-Law Trademark Rights.
[ ] Test any mid-proceeding relaunch for whether it grew out of gap-period work or was assembled after service. Use following forty-eight years of dormancy did not defeat abandonment, AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1550-51 (11th Cir. 1986), but later conduct is probative where it corroborates a documented development record, Crash Dummy, 601 F.3d at 1392.
[ ] Preserve appellate options from an adverse final office action: three months to seek reconsideration, petition the Director on limited grounds, or appeal to the Board. 37 C.F.R. §§ 2.93(c), 2.142(a)(2); In re Locus Link USA, 2024 U.S.P.Q.2d 1181 (T.T.A.B. 2024) (cancellation affirmed over a preposition). See the Ex Parte Appeal Checklist and Taking an Ex Parte Appeal.
[ ] Docket the next windows, prune every good in your own portfolio you are not using, and open a revival file for every brand you have paused. One hour a year is the whole difference between Crash Dummy and Natural Answers, Inc. v. SmithKline Beecham Corp., 529 F.3d 1325, 1330 (11th Cir. 2008). See Docketing Deadlines, the Annual Portfolio Review Checklist, and the Trademark Portfolio Management Toolkit.

Common Mistakes

Filing on a thin investigation. Two in five third-party petitions are refused institution, almost always for this reason, and there is no appeal. 15 U.S.C. §§ 1066a(d), 1066b(e).
Screenshotting today instead of archiving the relevant period. The question is past use.
Pleading "intent to abandon." The statutory question is intent to resume. Almost no owner intends to abandon anything, and a fact-finder told to look for that will never find it. Imperial Tobacco, 899 F.2d at 1580-81.
Pleading abandonment as an affirmative defense at the Board, or surrendering mid-cancellation to make it stop — the first is an impermissible collateral attack, 37 C.F.R. § 2.106(b)(3), and the second is judgment against you, § 2.134(a).
Running a keep-alive shipment program. It generates a memorandum, written by your own people, stating that the purpose is to preserve trademark rights. That memorandum is Exhibit 1 at the deposition.
Building the revival file after the petition arrives, or routing product planning through counsel to privilege it. Metadata is discoverable, revival documents are business records, and you lose both fights.
Filing a blanket excusable non-use claim across goods you never used. There was nothing to excuse, and you have added a false-declaration problem. See Fraud on the Trademark Office.
Forgetting your own office action clock while an expungement runs.

Deadlines at a Glance

| Filing or event | Window | Extension or grace | Miss it and | |---|---|---|---| | Ex parte expungement petition | 3rd–10th anniversary, 37 C.F.R. § 2.91(b)(1) | None | Ground lost; § 1064(6) remains | | Ex parte reexamination petition | Within 5 years, §§ 1(a)/1(b) only, § 2.91(b)(2) | None | Ground lost | | Response to TMA office action | 3 months from issuance | One month, on request and fee, § 2.93(b)(1) | Cancellation for those goods | | Reconsideration, Director petition, or appeal | 3 months from final action, §§ 2.93(c), 2.142(a)(2) | None | Cancellation becomes final | | Answer to a Board cancellation | ~40 days from the Board's notice | On motion | Default judgment | | Board expert disclosures | 30 days before close of discovery, § 2.120(a)(2)(iii) | Stipulation or motion | Expert excluded | | Board motion to compel | Before first pretrial disclosures, § 2.120(f)(1) | None | Motion waived | | Board summary judgment | After initial disclosures, before first pretrial disclosures, § 2.127(e)(1) | None | Motion untimely | | Section 8 declaration | 5th–6th anniversary | 6 months, per-class surcharge | Registration cancelled | | Combined Sections 8 and 9 | 9th–10th anniversary, then every 10 years | 6 months, per-class surcharge | Cancelled and expired | | Section 71 (Madrid) | Same windows as Section 8, 15 U.S.C. § 1141k | 6 months, surcharge | Protection cancelled |

Worked example, closed. Ridgeline files the expungement petition on 14 August 2024 for shirts, pants, gloves, socks and footwear, supported by fourteen archived captures, eleven stockist searches and one investigator call. Institution issues; Harrow & Bell deletes rather than responds; the five goods come off the registration. Ridgeline requests reconsideration of the Section 2(d) refusal attaching the amended certificate, and HARROW proceeds to publication. Total cost, investigation included: a little under $9,000. Government fees paid: $400.