IB Union Calendar No. 530 116TH CONGRESS 2D SESSION H. R. 6196 [Report No. 116–645] 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 HOUSE OF REPRESENTATIVES MARCH 11, 2020 Mr. JOHNSON of Georgia (for himself, Mr. COLLINS of Georgia, Mr. NADLER, and Mrs. ROBY) introduced the following bill; which was referred to the Committee on the Judiciary DECEMBER 14, 2020 Additional sponsors: Mr. CICILLINE, Mr. RESCHENTHALER, Mr. CLINE, Mr. DEUTCH, Mr. STANTON, and Mr. JACOBS DECEMBER 14, 2020 Reported with amendments, committed to the Committee of the Whole House on the State of the Union, and ordered to be printed [Strike out all after the enacting clause and insert the part printed in italic] [For text of introduced bill, see copy of bill as introduced on March 11, 2020] VerDate Sep 11 2014 21:01 Dec 14, 2020 Jkt 019200 PO 00000 Frm 00001 Fmt 6652 Sfmt 6652 E:\BILLS\H6196.RH H6196 pamtmann on DSKBC07HB2PROD with BILLS 2 •HR 6196 RH 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. VerDate Sep 11 2014 21:01 Dec 14, 2020 Jkt 019200 PO 00000 Frm 00002 Fmt 6652 Sfmt 6652 E:\BILLS\H6196.RH H6196 pamtmann on DSKBC07HB2PROD with BILLS 3 •HR 6196 RH 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 (b) TABLE OF CONTENTS.—The table of contents for 7 this Act is as follows: 8 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. Ex parte expungement; Ex parte reexamination; new grounds for cancella- tion. Sec. 6. Rebuttable presumption of irreparable harm. Sec. 7. Report on decluttering initiatives. Sec. 8. Amendments to confirm authority of the Director. SEC. 2. DEFINITIONS. 9 In this Act: 10 (1) DIRECTOR.—The term ‘‘Director’’ means the 11 Under Secretary of Commerce for Intellectual Prop- 12 erty and Director of the United States Patent and 13 Trademark Office. 14 (2) TRADEMARK ACT OF 1946.—The term ‘‘Trade- 15 mark Act of 1946’’ means the Act entitled ‘‘An Act to 16 provide for the registration and protection of trade- 17 marks used in commerce, to carry out the provisions 18 of certain international conventions, and for other 19 purposes’’, approved July 5, 1946, as amended (15 20 VerDate Sep 11 2014 21:01 Dec 14, 2020 Jkt 019200 PO 00000 Frm 00003 Fmt 6652 Sfmt 6203 E:\BILLS\H6196.RH H6196 pamtmann on DSKBC07HB2PROD with BILLS 4 •HR 6196 RH U.S.C. 1051, et. seq) (commonly referred to as the 1 ‘‘Trademark Act of 1946’’ or the ‘‘Lanham Act’’). 2 SEC. 3. PROVIDING FOR THIRD-PARTY SUBMISSION OF EVI- 3 DENCE DURING EXAMINATION. 4 (a) AMENDMENT.—Section 1 of the Trademark Act of 5 1946 (15 U.S.C. 1051) is amended by inserting at the end 6 the following new subsection: 7 ‘‘(f) A third party may submit for consideration for 8 inclusion in the record of an application evidence relevant 9 to a ground for refusal of registration. The third-party sub- 10 mission shall identify the ground for refusal and include 11 a concise description of each piece of evidence submitted in 12 support of each identified ground for refusal. Within two 13 months after the date on which the submission is filed, the 14 Director shall determine whether the evidence should be in- 15 cluded in the record of the application. The Director shall 16 establish by regulation appropriate procedures for the con- 17 sideration of evidence submitted by a third party under this 18 subsection and may prescribe a fee to accompany the sub- 19 mission. If the Director determines that the third-party evi- 20 dence should be included in the record of the application, 21 only the evidence and the ground for refusal to which the 22 evidence relates may be so included. Any determination by 23 the Director whether or not to include evidence in the record 24 of an application shall be final and non-reviewable, and 25 VerDate Sep 11 2014 21:01 Dec 14, 2020 Jkt 019200 PO 00000 Frm 00004 Fmt 6652 Sfmt 6203 E:\BILLS\H6196.RH H6196 pamtmann on DSKBC07HB2PROD with BILLS 5 •HR 6196 RH a determination to include or to not include evidence in 1 the record shall not prejudice any party’s right to raise any 2 issue and rely on any evidence in any other proceeding.’’. 3 (b) DEADLINE FOR PROCEDURES.—Not later than one 4 year after the date of the enactment of this Act, the Director 5 shall establish the appropriate procedures described in sec- 6 tion 1(f) of the Trademark Act of 1946, as added by sub- 7 section (a). 8 (c) EFFECTIVE DATE.—The amendment made by sub- 9 section (a) shall take effect one year after the date of the 10 enactment of this Act. 11 SEC. 4. PROVIDING FOR FLEXIBLE RESPONSE PERIODS. 12 Section 12(b) of the Trademark Act of 1946 (15 U.S.C. 13 1062(b)) is amended to read as follows: 14 ‘‘(b)(1) If the applicant is found not entitled to reg- 15 istration, the examiner shall notify the applicant thereof 16 and of the reasons therefor. The applicant may reply or 17 amend the application, which shall then be reexamined. 18 This procedure may be repeated until the examiner finally 19 refuses registration of the mark or the application is aban- 20 doned as described in paragraph (2). 21 ‘‘(2) After notification under paragraph (1), the appli- 22 cant shall have a period of six months in which to reply 23 or amend the application, or such shorter time that is not 24 less than sixty days, as prescribed by the Director by regu- 25 VerDate Sep 11 2014 21:01 Dec 14, 2020 Jkt 019200 PO 00000 Frm 00005 Fmt 6652 Sfmt 6203 E:\BILLS\H6196.RH H6196 pamtmann on DSKBC07HB2PROD with BILLS 6 •HR 6196 RH lation. If the applicant fails to reply or amend or appeal 1 within the relevant time period, including any extension 2 under paragraph (3), the application shall be deemed to 3 have been abandoned, unless it can be shown to the satisfac- 4 tion of the Director that the delay in responding was unin- 5 tentional, in which case the application may be revived and 6 such time may be extended. The Director may prescribe a 7 fee to accompany any request to revive. 8 ‘‘(3) The Director shall provide, by regulation, for ex- 9 tensions of time to respond to the examiner for any time 10 period under paragraph (2) that is less than six months. 11 The Director must allow the applicant to obtain extensions 12 of time to reply or amend aggregating six months from the 13 date of notification under paragraph (1) when the appli- 14 cant so requests. However, the Director may set by regula- 15 tion the time for individual periods of extension, and pre- 16 scribe a fee, by regulation, for any extension request. Any 17 request for extension must be filed on or before the date on 18 which a reply or amendment is due under paragraph (1).’’. 19 SEC. 5. EX PARTE EXPUNGEMENT; EX PARTE REEXAMINA- 20 TION; NEW GROUNDS FOR CANCELLATION. 21 (a) EX PARTE EXPUNGEMENT.—The Trademark Act 22 of 1946 (15 U.S.C. 1066) is amended by inserting after sec- 23 tion 16, the following new section: 24 VerDate Sep 11 2014 21:01 Dec 14, 2020 Jkt 019200 PO 00000 Frm 00006 Fmt 6652 Sfmt 6203 E:\BILLS\H6196.RH H6196 pamtmann on DSKBC07HB2PROD with BILLS 7 •HR 6196 RH ‘‘SEC. 16A. EX PARTE EXPUNGEMENT. 1 ‘‘(a) PETITION.—Notwithstanding sections 7(b) and 2 22, and subsections (a) and (b) of section 33, any person 3 may file a petition to expunge a registration of a mark 4 on the basis that the mark has never been used in commerce 5 on or in connection with some or all of the goods or services 6 recited in the registration. 7 ‘‘(b) CONTENTS OF PETITION.—The petition, together 8 with any supporting documents, shall— 9 ‘‘(1) identify the registration that is the subject 10 of the petition; 11 ‘‘(2) identify each good or service recited in the 12 registration for which it is alleged that the mark has 13 never been used in commerce; 14 ‘‘(3) include a verified statement that sets forth 15 the elements of the reasonable investigation the peti- 16 tioner conducted to determine that the mark has never 17 been used in commerce on or in connection with the 18 goods and services identified in the petition, and any 19 additional facts that support the allegation that the 20 mark has never been used in commerce on or in con- 21 nection with the identified goods and services; 22 ‘‘(4) include any supporting evidence on which 23 the petitioner relies; and 24 ‘‘(5) be accompanied by the fee prescribed by the 25 Director. 26 VerDate Sep 11 2014 21:01 Dec 14, 2020 Jkt 019200 PO 00000 Frm 00007 Fmt 6652 Sfmt 6203 E:\BILLS\H6196.RH H6196 pamtmann on DSKBC07HB2PROD with BILLS 8 •HR 6196 RH ‘‘(c) INITIAL DETERMINATION; INSTITUTION.— 1 ‘‘(1) PRIMA FACIE CASE DETERMINATION, INSTI- 2 TUTION, AND NOTIFICATION.—The Director shall, for 3 each good or service identified under subsection (b)(2), 4 determine whether the petition sets forth a prima 5 facie case of the mark having never been used in com- 6 merce on or in connection with each such good or 7 service, institute an ex parte expungement proceeding 8 for each good or service for which the Director deter- 9 mines that a prima facie case has been set forth, and 10 provide a notice to the registrant and petitioner of the 11 determination of whether or not the proceeding was 12 instituted. Such notice should include a copy of the 13 petition and any supporting documents and evidence 14 that were included with the petition. 15 ‘‘(2) REASONABLE INVESTIGATION GUIDANCE.— 16 The Director shall promulgate regulations regarding 17 what constitutes a reasonable investigation under sub- 18 section (b)(3) and the general types of evidence that 19 could support a prima facie case that a mark has 20 never been used in commerce, but the Director shall 21 retain the discretion to determine whether a prima 22 facie case is set out in a particular proceeding. 23 ‘‘(3) DETERMINATION BY DIRECTOR.—Any deter- 24 mination by the Director whether or not to institute 25 VerDate Sep 11 2014 21:01 Dec 14, 2020 Jkt 019200 PO 00000 Frm 00008 Fmt 6652 Sfmt 6203 E:\BILLS\H6196.RH H6196 pamtmann on DSKBC07HB2PROD with BILLS 9 •HR 6196 RH a proceeding under this section shall be final and 1 non-reviewable, and shall not prejudice any party’s 2 right to raise any issue and rely on any evidence in 3 any other proceeding, except as provided by sub- 4 section (j). 5 ‘‘(d) EX PARTE EXPUNGEMENT PROCEDURES.—The 6 procedures for ex parte expungement shall be the same as 7 those for examination under section 12(b), except that the 8 Director shall promulgate regulations establishing and gov- 9 erning a proceeding under this section, which may include 10 regulations that set response and extension times particular 11 to this type of proceeding, which, notwithstanding section 12 12(b)(3) need not be extendable to six months, set limits 13 governing the timing and number of petitions filed for a 14 particular registration or by a particular petitioner or real 15 parties in interest, and defining the relation of a proceeding 16 under this section to other proceedings concerning the mark. 17 ‘‘(e) REGISTRANT’S EVIDENCE OF USE.—A reg- 18 istrant’s documentary evidence of use must be consistent 19 with when ‘a mark shall be deemed to be in use in com- 20 merce’ as defined in section 45, but shall not be limited 21 in form to that of specimens as provided in section 1(a). 22 ‘‘(f) EXCUSABLE NONUSE.—During an ex parte 23 expungement proceeding, for a mark registered under sec- 24 tion 44(e) or an extension of protection under section 66, 25 VerDate Sep 11 2014 21:01 Dec 14, 2020 Jkt 019200 PO 00000 Frm 00009 Fmt 6652 Sfmt 6203 E:\BILLS\H6196.RH H6196 pamtmann on DSKBC07HB2PROD with BILLS 10 •HR 6196 RH the registrant may offer evidence showing that any nonuse 1 is due to special circumstances that excuse such nonuse. In 2 such a case, the examiner shall determine whether the facts 3 and evidence demonstrate excusable nonuse and shall not 4 find that the registration should be cancelled under sub- 5 section (g) for any good or service for which excusable non- 6 use is demonstrated. 7 ‘‘(g) EXAMINER’S DECISION; ORDER TO CANCEL.—For 8 each good or service for which it is determined that a mark 9 has never been used in commerce, and for which the provi- 10 sions of subsection (f) do not apply, the examiner shall find 11 that the registration should be cancelled for each such good 12 or service. A mark may not be found to have never been 13 used in commerce if there is evidence of use in commerce 14 by the registrant that temporally would have supported reg- 15 istration at the time the application was filed or the rel- 16 evant allegation of use was made, or after registration, but 17 before the petition to expunge was filed under subsection 18 (a), or an ex parte expungement proceeding was instituted 19 by the Director under subsection (h). Unless overturned on 20 review of the examiner’s decision, the Director shall issue 21 an order cancelling the registration, in whole or in part, 22 after the time for appeal has expired or any appeal pro- 23 ceeding has terminated. 24 ‘‘(h) EX PARTE EXPUNGEMENT BY THE DIRECTOR.— 25 VerDate Sep 11 2014 21:01 Dec 14, 2020 Jkt 019200 PO 00000 Frm 00010 Fmt 6652 Sfmt 6203 E:\BILLS\H6196.RH H6196 pamtmann on DSKBC07HB2PROD with BILLS 11 •HR 6196 RH ‘‘(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 supports a prima facie case of a mark 4 having never been used in commerce on or in connec- 5 tion with any good or service covered by a registra- 6 tion. The Director shall promptly notify the reg- 7 istrant of such determination, at which time the ex 8 parte expungement proceeding shall proceed according 9 to the same procedures for ex parte expungement es- 10 tablished pursuant to subsection (d). If the Director 11 determines, based on the Director’s own initiative, to 12 institute an expungement proceeding, the Director 13 shall transmit or make available the information that 14 formed the basis for that determination [Text truncated for display. Full text available on Congress.gov.]