TM Act of 2020

II 116TH CONGRESS 2D SESSION S. 3449 To amend the Trademark Act of 1946 to provide for third-party submission of evidence relating to a trademark application, to establish expungement and ex parte proceedings relating to the validity of marks, to provide for a rebuttal presumption of irreparable harm in certain proceedings, and for other purposes. IN THE SENATE OF THE UNITED STATES MARCH 11, 2020 Mr. TILLIS (for himself and Mr. COONS) introduced the following bill; which was read twice and referred to the Committee on the Judiciary A BILL To amend the Trademark Act of 1946 to provide for third- party submission of evidence relating to a trademark application, to establish expungement and ex parte pro- ceedings relating to the validity of marks, to provide for a rebuttal presumption of irreparable harm in certain proceedings, and for other purposes. Be it enacted by the Senate and House of Representa- 1 tives of the United States of America in Congress assembled, 2 SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 3 (a) SHORT TITLE.—This Act may be cited as the 4 ‘‘Trademark Modernization Act of 2020’’ or the ‘‘TM Act 5 of 2020’’. 6 VerDate Sep 11 2014 21:14 Mar 24, 2020 Jkt 099200 PO 00000 Frm 00001 Fmt 6652 Sfmt 6201 E:\BILLS\S3449.IS S3449 khammond on DSKJM1Z7X2PROD with BILLS 2 •S 3449 IS (b) TABLE OF CONTENTS.—The table of contents for 1 this Act is as follows: 2 Sec. 1. Short title; table of contents. Sec. 2. Definitions. Sec. 3. Providing for third-party submission of evidence during examination. Sec. 4. Providing for flexible response periods. Sec. 5. Expungement; ex parte reexamination. Sec. 6. Rebuttable presumption of irreparable harm. Sec. 7. Report on decluttering initiatives. SEC. 2. DEFINITIONS. 3 In this Act: 4 (1) DIRECTOR.—The term ‘‘Director’’ means 5 the Under Secretary of Commerce for Intellectual 6 Property and Director of the United States Patent 7 and Trademark Office. 8 (2) TRADEMARK ACT OF 1946.—The term 9 ‘‘Trademark Act of 1946’’ means the Act entitled 10 ‘‘An Act to provide for the registration and protec- 11 tion of trademarks used in commerce, to carry out 12 the provisions of certain international conventions, 13 and for other purposes’’, approved July 5, 1946 14 (commonly known as the ‘‘Trademark Act of 1946’’ 15 or the ‘‘Lanham Act’’; 15 U.S.C. 1051 et seq.). 16 SEC. 3. PROVIDING FOR THIRD-PARTY SUBMISSION OF EVI- 17 DENCE DURING EXAMINATION. 18 (a) AMENDMENT.—Section 1 of the Trademark Act 19 of 1946 (15 U.S.C. 1051) is amended by adding at the 20 end the following new subsection: 21 VerDate Sep 11 2014 00:31 Mar 22, 2020 Jkt 099200 PO 00000 Frm 00002 Fmt 6652 Sfmt 6201 E:\BILLS\S3449.IS S3449 khammond on DSKJM1Z7X2PROD with BILLS 3 •S 3449 IS ‘‘(f) A third party may submit for consideration for 1 inclusion in the record of an application evidence relevant 2 to a ground for refusal of registration. The third-party 3 submission shall identify the ground for refusal and in- 4 clude a concise description of each piece of evidence sub- 5 mitted in support of each identified ground for refusal. 6 Within 2 months after the date on which the submission 7 is filed, the Director shall determine whether the evidence 8 should be included in the record of the application. The 9 Director shall establish by regulation appropriate proce- 10 dures for the consideration of evidence submitted by a 11 third party under this subsection and may prescribe a fee 12 to accompany the submission. If the Director determines 13 that the third-party evidence should be included in the 14 record of the application, only the evidence and the ground 15 for refusal to which the evidence relates may be so in- 16 cluded. Any determination by the Director whether or not 17 to include evidence in the record of an application shall 18 be final and non-reviewable, and shall not prejudice any 19 party’s right to raise any issue and rely on any evidence 20 in any other proceeding.’’. 21 (b) DEADLINE FOR PROCEDURES.—Not later than 1 22 year after the date of enactment of this Act, the Director 23 shall establish the appropriate procedures described in sec- 24 VerDate Sep 11 2014 00:31 Mar 22, 2020 Jkt 099200 PO 00000 Frm 00003 Fmt 6652 Sfmt 6201 E:\BILLS\S3449.IS S3449 khammond on DSKJM1Z7X2PROD with BILLS 4 •S 3449 IS tion 1(f) of the Trademark Act of 1946, as added by sub- 1 section (a). 2 (c) EFFECTIVE DATE.—The amendment made by 3 subsection (a) shall take effect on the date that is 1 year 4 after the date of enactment of this Act. 5 SEC. 4. PROVIDING FOR FLEXIBLE RESPONSE PERIODS. 6 Section 12(b) of the Trademark Act of 1946 (15 7 U.S.C. 1062(b)) is amended to read as follows: 8 ‘‘(b)(1) If the applicant is found not entitled to reg- 9 istration, the examiner shall notify the applicant thereof 10 and of the reasons therefor. The applicant may reply or 11 amend the application, which shall then be reexamined. 12 This procedure may be repeated until the examiner finally 13 refuses registration of the mark or the application is aban- 14 doned as described in paragraph (2). 15 ‘‘(2) After notification under paragraph (1), the ap- 16 plicant shall have a period of 6 months in which to reply 17 or amend the application, or such shorter time that is not 18 less than 60 days, as prescribed by the Director by regula- 19 tion. If the applicant fails to reply or amend or appeal 20 within the relevant time period, including any extension 21 under paragraph (3), the application shall be deemed to 22 have been abandoned, unless it can be shown to the satis- 23 faction of the Director that the delay in responding was 24 unintentional, in which case the application may be revived 25 VerDate Sep 11 2014 00:31 Mar 22, 2020 Jkt 099200 PO 00000 Frm 00004 Fmt 6652 Sfmt 6201 E:\BILLS\S3449.IS S3449 khammond on DSKJM1Z7X2PROD with BILLS 5 •S 3449 IS and such time may be extended. The Director may pre- 1 scribe a fee to accompany any request to revive. 2 ‘‘(3) The Director shall provide, by regulation, for ex- 3 tensions of time to respond to the examiner for any time 4 period under paragraph (2) that is less than 6 months. 5 The Director must allow the applicant to obtain extensions 6 of time to reply or amend aggregating 6 months from the 7 date of notification under paragraph (1) when the appli- 8 cant so requests. However, the Director may set by regula- 9 tion the time for individual periods of extension, and pre- 10 scribe a fee, by regulation, for any extension request. Any 11 request for extension must be filed on or before the date 12 on which a reply or amendment is due under paragraph 13 (1).’’. 14 SEC. 5. EXPUNGEMENT; EX PARTE REEXAMINATION. 15 (a) EX PARTE EXPUNGEMENT.—The Trademark Act 16 of 1946 is amended by inserting after section 16 (15 17 U.S.C. 1066) the following new section: 18 ‘‘SEC. 16A. EX PARTE EXPUNGEMENT. 19 ‘‘(a) PETITION.—Notwithstanding sections 7(b) and 20 22, and subsections (a) and (b) of section 33, any person 21 may file a petition to expunge a registration on the basis 22 that the mark has never been used in commerce on or 23 in connection with some or all of the goods or services 24 recited in the registration. 25 VerDate Sep 11 2014 00:31 Mar 22, 2020 Jkt 099200 PO 00000 Frm 00005 Fmt 6652 Sfmt 6201 E:\BILLS\S3449.IS S3449 khammond on DSKJM1Z7X2PROD with BILLS 6 •S 3449 IS ‘‘(b) CONTENTS OF PETITION.—The petition, to- 1 gether with any supporting documents, shall— 2 ‘‘(1) identify each registration at issue; 3 ‘‘(2) identify each good or service recited in the 4 registration for which it is alleged that the mark has 5 never been used in commerce; 6 ‘‘(3) include a verified statement that sets forth 7 the elements of the reasonable investigation the peti- 8 tioner conducted to determine that the mark has 9 never been used in commerce on or in connection 10 with the goods and services identified in the petition, 11 and any additional facts that support the allegation 12 that the mark has never been used in commerce on 13 or in connection with the identified goods and serv- 14 ices; 15 ‘‘(4) include any supporting evidence on which 16 the petitioner relies; and 17 ‘‘(5) be accompanied by the fee prescribed by 18 the Director. 19 ‘‘(c) INITIAL DETERMINATION; INSTITUTION.— 20 ‘‘(1) PRIMA FACIE CASE, INSTITUTION, AND NO- 21 TIFICATION.—The Director shall determine whether 22 the petition sets forth a prima facie case of the mark 23 having never been used in commerce on or in con- 24 nection with each good or service identified in the 25 VerDate Sep 11 2014 00:31 Mar 22, 2020 Jkt 099200 PO 00000 Frm 00006 Fmt 6652 Sfmt 6201 E:\BILLS\S3449.IS S3449 khammond on DSKJM1Z7X2PROD with BILLS 7 •S 3449 IS petition, institute the ex parte expungement pro- 1 ceeding for each good or service for which the Direc- 2 tor determines that the prima facie case has been 3 set forth, and notify the registrant and petitioner of 4 the determination of whether to institute the pro- 5 ceeding. If the Director determines that an expunge- 6 ment proceeding should be instituted based on a pe- 7 tition, the Director shall transmit or make available 8 that petition and any supporting evidence from the 9 petitioner to the registrant as part of the institution 10 notice. 11 ‘‘(2) REASONABLE INVESTIGATION GUID- 12 ANCE.—The Director shall promulgate regulations 13 regarding what constitutes a reasonable investigation 14 under subsection (b)(3) and the general types of evi- 15 dence that could constitute a sufficient showing of a 16 mark having never been used in commerce under 17 subsection (b)(4), but the Director shall retain dis- 18 cretion to determine whether a prima facie case is 19 set out in a particular case. 20 ‘‘(3) DETERMINATION BY DIRECTOR.—Any de- 21 termination by the Director whether or not to insti- 22 tute a proceeding under this section shall be final 23 and non-reviewable, and shall not prejudice any par- 24 VerDate Sep 11 2014 00:31 Mar 22, 2020 Jkt 099200 PO 00000 Frm 00007 Fmt 6652 Sfmt 6201 E:\BILLS\S3449.IS S3449 khammond on DSKJM1Z7X2PROD with BILLS 8 •S 3449 IS ty’s right to raise any issue and rely on any evidence 1 in any other proceeding. 2 ‘‘(d) EX PARTE EXPUNGEMENT PROCEDURES.—The 3 procedures for ex parte expungement shall be the same 4 as those for examination under section 12(b), except that 5 the Director shall promulgate regulations establishing and 6 governing a proceeding under this section, which may in- 7 clude setting response and extension times particular to 8 this proceeding, which, notwithstanding section 12(b)(3) 9 need not be extendable to 6 months, setting limits gov- 10 erning the timing and number of petitions filed for a par- 11 ticular registration or by a particular petitioner or real 12 parties in interest, and defining the relation of a pro- 13 ceeding under this section to other proceedings concerning 14 the mark. 15 ‘‘(e) REGISTRANT’S EVIDENCE OF USE.—A reg- 16 istrant’s documentary evidence of use must be consistent 17 with when ‘a mark shall be deemed to be in use in com- 18 merce’ as defined in section 45, but shall not be limited 19 in form to that of specimens as provided in section 1(a). 20 ‘‘(f) EXCUSABLE NONUSE.—During an expungement 21 proceeding, for a mark registered under section 44(e) or 22 an extension of protection under section 66, the registrant 23 may offer evidence showing that any nonuse is due to spe- 24 cial circumstances that excuse such nonuse. In such a 25 VerDate Sep 11 2014 00:31 Mar 22, 2020 Jkt 099200 PO 00000 Frm 00008 Fmt 6652 Sfmt 6201 E:\BILLS\S3449.IS S3449 khammond on DSKJM1Z7X2PROD with BILLS 9 •S 3449 IS case, the examiner shall determine whether the facts dem- 1 onstrate excusable nonuse and shall not find that the reg- 2 istration should be cancelled under subsection (g) for any 3 good or service for which excusable nonuse is dem- 4 onstrated. 5 ‘‘(g) EXAMINER’S DECISION; ORDER TO CANCEL.— 6 For each good or service for which it is determined that 7 a mark was never in use in commerce, and for which the 8 provisions of subsection (f) do not apply, the examiner 9 shall find that the registration should be cancelled for each 10 such good or service. A mark may not be found to never 11 have been in use in commerce if there is evidence of use 12 in commerce by the registrant that temporally would have 13 supported registration at the time the application was filed 14 or the relevant allegation of use was made, or after reg- 15 istration, but before the petition to expunge is filed or the 16 Director, on his own initiative, institutes an expungement 17 proceeding in accordance with subsection (h). Unless over- 18 turned on review of the examiner’s decision, the Director 19 shall issue an order cancelling the registration, in whole 20 or in part, after the time for appeal has expired or any 21 appeal proceeding has terminated. 22 ‘‘(h) EX PARTE EXPUNGEMENT BY THE DIREC- 23 TOR.— 24 VerDate Sep 11 2014 00:31 Mar 22, 2020 Jkt 099200 PO 00000 Frm 00009 Fmt 6652 Sfmt 6201 E:\BILLS\S3449.IS S3449 khammond on DSKJM1Z7X2PROD with BILLS 10 •S 3449 IS ‘‘(1) IN GENERAL.—The Director may, on the 1 Director’s own initiative, institute an ex parte 2 expungement proceeding if the Director discovers in- 3 formation that sets forth a prima facie case of a 4 mark having never been used in commerce on or in 5 connection with any good or service covered by the 6 registration. The Director shall promptly notify the 7 registrant of such determination, at which time the 8 expungement proceeding shall proceed according to 9 the same procedures for expungement established 10 pursuant to subsection (d). If the Director deter- 11 mines, based on the Director’s own initiative, to in- 12 stitute an expungement proceeding, the Director 13 shall transmit or make available the information 14 that formed the basis for that determination as part 15 of the institution notice sent to the registrant. 16 ‘‘(2) RULE OF CONSTRUCTION.—Nothing in 17 this subsection may be construed to limit any other 18 authority of the Director. 19 ‘‘(i) TIME FOR INSTITUTION.—A petition for ex parte 20 expungement may be filed, or the Director may institute 21 on his own initiative an ex parte expungement proceeding, 22 at any time following the expiration of 3 years after the 23 date of registration. 24 VerDate Sep 11 2014 00:31 Mar 22, 2020 Jkt 099200 PO 00000 Frm 00010 Fmt 6652 Sfmt 6201 E:\BILLS\S3449.IS S3449 khammond on DSKJM1Z7X2PROD with BILLS 11 •S 3449 IS ‘‘(j) LIMITATION ON LATER EX PARTE 1 EXPUNGEMENT PROCEEDINGS.— 2 ‘‘(1) NO CO-PENDING PROCEEDINGS.—With re- 3 spect to a particular registration, while an ex parte 4 expungement proceeding is pending, no later ex 5 parte expungement proceeding can be instituted with 6 respect to the same goods or services that are the 7 subject o [Text truncated for display. 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