In Use, or Not In Use: Understanding the TMA’s “Reasonable Investigation” Requirement

When rumor of the Trademark Modernization Act of 2020 proposed changes were first announced at the end of 2020, our ears perked up at the use of the term “reasonable investigation” as a requirement for expungement or reexamination petitions. Fast forward to mid-2021 when the draft rules were published, the term ‘investigation’ was used a total of 28 times.

While the USPTO acknowledges that “a single search using an internet search engine likely would not be considered a reasonable investigation,” it also states “a reasonable investigation does not require a showing that all of the potentially available sources of evidence were searched.” Fortunately, striking that balance is something that we have honed & perfected over the past 18+ years of trademark use investigations.

The USPTO also states that “a petitioner is not required or expected to commission a private investigation, but may choose to generally reference the results of any report from such an investigation.” Again, this is about finding the right balance of available resources to best support your case.

Understanding that hiring investigators may not be possible, necessary or desired in every instance, we offered a workshop during Alt Legal’s virtual conference, Connect 2021. Our workshop covered the “reasonable investigation” elements as outlined in the TMA, along with tools, tips and tricks from our experience in this arena. This was Alt Legal’s second Connect conference and first time offering workshops, which also included a guided practice portion. The workshops were limited to 15 participants, and our “In Use, or Not In Use, That is the Question” was the first to fill up (both available sessions) – so certainly a hot topic & one that we were excited to discuss.

The amazing Alt Legal team was kind enough to record it and allow us to share it. We hope you glean at least a few new resources to support your efforts. To accompany the workshop, we also compiled a worksheet, which contains all of the resources referenced in the presentation. If you would like a copy, please contact us to request it. 

Of course, if you prefer to outsource your investigative needs to the team of expert IPR PIs at Vaudra International, we are here to help.

In case you aren’t familiar with Alt Legal, they offer automated docketing software, openly LOVE trademarks and are a fantastic company that has built a vibrant community of likeminded, punny IP professionals through their products & events. With free webinars that cover a variety of topics & include a social element too, they continue to produce & promote content to benefit the IP industry & those working in it. Learn more at http://www.altlegal.com.

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