[House Report 116-645]
[From the U.S. Government Publishing Office]


116th Congress  }                                              {   Report
                         HOUSE OF REPRESENTATIVES
 2d Session     }                                              {  116-645

======================================================================



 
                  TRADEMARK MODERNIZATION ACT OF 2020

                                _______
                                

 December 14, 2020.--Committed to the Committee of the Whole House on 
            the State of the Union and ordered to be printed

                                _______
                                

    Mr. Nadler, from the Committee on the Judiciary, submitted the 
                               following

                              R E P O R T

                        [To accompany H.R. 6196]

    The Committee on the Judiciary, to whom was referred the 
bill (H.R. 6196) 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, having considered the same, report favorably 
thereon with amendments and recommend that the bill as amended 
do pass.

                                CONTENTS

                                                                   Page
    Purpose and Summary...............................................8
    Background and Need for the Legislation...........................8
    Hearings.........................................................22
    Committee Consideration..........................................22
    Vote of the Committee............................................22
    Committee Oversight Findings.....................................22
    New Budget Authority and Tax Expenditures and Congressional Budget 
    Office Cost Estimate.............................................22
    Duplication of Federal Programs..................................23
    Performance Goals and Objectives.................................23
    Advisory on Earmarks.............................................23
    Section-by-Section Analysis......................................23
    Changes in Existing Law Made by the Bill, as Reported............27

    The amendments are as follows:
  Strike all after the enacting clause and insert the 
following:

SECTION 1. SHORT TITLE; TABLE OF CONTENTS.

  (a) Short Title.--This Act may be cited as the ``Trademark 
Modernization Act of 2020'' or the ``TM Act of 2020''.
  (b) Table of Contents.--The table of contents for this Act is as 
follows:

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 
cancellation.
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.

  In this Act:
          (1) Director.--The term ``Director'' means the Under 
        Secretary of Commerce for Intellectual Property and Director of 
        the United States Patent and Trademark Office.
          (2) Trademark act of 1946.--The term ``Trademark Act of 
        1946'' means the Act entitled ``An Act to provide for the 
        registration and protection of trademarks used in commerce, to 
        carry out the provisions of certain international conventions, 
        and for other purposes'', approved July 5, 1946, as amended (15 
        U.S.C. 1051, et. seq) (commonly referred to as the ``Trademark 
        Act of 1946'' or the ``Lanham Act'').

SEC. 3. PROVIDING FOR THIRD-PARTY SUBMISSION OF EVIDENCE DURING 
                    EXAMINATION.

  (a) Amendment.--Section 1 of the Trademark Act of 1946 (15 U.S.C. 
1051) is amended by inserting at the end the following new subsection:
  ``(f) A third party may submit for consideration for inclusion in the 
record of an application evidence relevant to a ground for refusal of 
registration. The third-party submission shall identify the ground for 
refusal and include a concise description of each piece of evidence 
submitted in support of each identified ground for refusal. Within two 
months after the date on which the submission is filed, the Director 
shall determine whether the evidence should be included in the record 
of the application. The Director shall establish by regulation 
appropriate procedures for the consideration of evidence submitted by a 
third party under this subsection and may prescribe a fee to accompany 
the submission. If the Director determines that the third-party 
evidence should be included in the record of the application, only the 
evidence and the ground for refusal to which the evidence relates may 
be so included. Any determination by the Director whether or not to 
include evidence in the record of an application shall be final and 
non-reviewable, and a determination to include or to not include 
evidence in the record shall not prejudice any party's right to raise 
any issue and rely on any evidence in any other proceeding.''.
  (b) Deadline for Procedures.--Not later than one year after the date 
of the enactment of this Act, the Director shall establish the 
appropriate procedures described in section 1(f) of the Trademark Act 
of 1946, as added by subsection (a).
  (c) Effective Date.--The amendment made by subsection (a) shall take 
effect one year after the date of the enactment of this Act.

SEC. 4. PROVIDING FOR FLEXIBLE RESPONSE PERIODS.

  Section 12(b) of the Trademark Act of 1946 (15 U.S.C. 1062(b)) is 
amended to read as follows:
  ``(b)(1) If the applicant is found not entitled to registration, the 
examiner shall notify the applicant thereof and of the reasons 
therefor. The applicant may reply or amend the application, which shall 
then be reexamined. This procedure may be repeated until the examiner 
finally refuses registration of the mark or the application is 
abandoned as described in paragraph (2).
  ``(2) After notification under paragraph (1), the applicant shall 
have a period of six months in which to reply or amend the application, 
or such shorter time that is not less than sixty days, as prescribed by 
the Director by regulation. If the applicant fails to reply or amend or 
appeal within the relevant time period, including any extension under 
paragraph (3), the application shall be deemed to have been abandoned, 
unless it can be shown to the satisfaction of the Director that the 
delay in responding was unintentional, in which case the application 
may be revived and such time may be extended. The Director may 
prescribe a fee to accompany any request to revive.
  ``(3) The Director shall provide, by regulation, for extensions of 
time to respond to the examiner for any time period under paragraph (2) 
that is less than six months. The Director must allow the applicant to 
obtain extensions of time to reply or amend aggregating six months from 
the date of notification under paragraph (1) when the applicant so 
requests. However, the Director may set by regulation the time for 
individual periods of extension, and prescribe a fee, by regulation, 
for any extension request. Any request for extension must be filed on 
or before the date on which a reply or amendment is due under paragraph 
(1).''.

SEC. 5. EX PARTE EXPUNGEMENT; EX PARTE REEXAMINATION; NEW GROUNDS FOR 
                    CANCELLATION.

  (a) Ex Parte Expungement.--The Trademark Act of 1946 (15 U.S.C. 1066) 
is amended by inserting after section 16, the following new section:

``SEC. 16A. EX PARTE EXPUNGEMENT.

  ``(a) Petition.--Notwithstanding sections 7(b) and 22, and 
subsections (a) and (b) of section 33, any person may file a petition 
to expunge a registration of a mark on the basis that the mark has 
never been used in commerce on or in connection with some or all of the 
goods or services recited in the registration.
  ``(b) Contents of Petition.--The petition, together with any 
supporting documents, shall--
          ``(1) identify the registration that is the subject of the 
        petition;
          ``(2) identify each good or service recited in the 
        registration for which it is alleged that the mark has never 
        been used in commerce;
          ``(3) include a verified statement that sets forth the 
        elements of the reasonable investigation the petitioner 
        conducted to determine that the mark has never been used in 
        commerce on or in connection with the goods and services 
        identified in the petition, and any additional facts that 
        support the allegation that the mark has never been used in 
        commerce on or in connection with the identified goods and 
        services;
          ``(4) include any supporting evidence on which the petitioner 
        relies; and
          ``(5) be accompanied by the fee prescribed by the Director.
  ``(c) Initial Determination; Institution.--
          ``(1) Prima facie case determination, institution, and 
        notification.--The Director shall, for each good or service 
        identified under subsection (b)(2), determine whether the 
        petition sets forth a prima facie case of the mark having never 
        been used in commerce on or in connection with each such good 
        or service, institute an ex parte expungement proceeding for 
        each good or service for which the Director determines that a 
        prima facie case has been set forth, and provide a notice to 
        the registrant and petitioner of the determination of whether 
        or not the proceeding was instituted. Such notice should 
        include a copy of the petition and any supporting documents and 
        evidence that were included with the petition.
          ``(2) Reasonable investigation guidance.--The Director shall 
        promulgate regulations regarding what constitutes a reasonable 
        investigation under subsection (b)(3) and the general types of 
        evidence that could support a prima facie case that a mark has 
        never been used in commerce, but the Director shall retain the 
        discretion to determine whether a prima facie case is set out 
        in a particular proceeding.
          ``(3) Determination by director.--Any determination by the 
        Director whether or not to institute a proceeding under this 
        section shall be final and non-reviewable, and shall not 
        prejudice any party's right to raise any issue and rely on any 
        evidence in any other proceeding, except as provided by 
        subsection (j).
  ``(d) Ex Parte Expungement Procedures.--The procedures for ex parte 
expungement shall be the same as those for examination under section 
12(b), except that the Director shall promulgate regulations 
establishing and governing a proceeding under this section, which may 
include regulations that set response and extension times particular to 
this type of proceeding, which, notwithstanding section 12(b)(3) need 
not be extendable to six months, set limits governing the timing and 
number of petitions filed for a particular registration or by a 
particular petitioner or real parties in interest, and defining the 
relation of a proceeding under this section to other proceedings 
concerning the mark.
  ``(e) Registrant's Evidence of Use.--A registrant's documentary 
evidence of use must be consistent with when `a mark shall be deemed to 
be in use in commerce' as defined in section 45, but shall not be 
limited in form to that of specimens as provided in section 1(a).
  ``(f) Excusable Nonuse.--During an ex parte expungement proceeding, 
for a mark registered under section 44(e) or an extension of protection 
under section 66, the registrant may offer evidence showing that any 
nonuse is due to special circumstances that excuse such nonuse. In such 
a case, the examiner shall determine whether the facts and evidence 
demonstrate excusable nonuse and shall not find that the registration 
should be cancelled under subsection (g) for any good or service for 
which excusable nonuse is demonstrated.
  ``(g) Examiner's Decision; Order to Cancel.--For each good or service 
for which it is determined that a mark has never been used in commerce, 
and for which the provisions of subsection (f) do not apply, the 
examiner shall find that the registration should be cancelled for each 
such good or service. A mark may not be found to have never been used 
in commerce if there is evidence of use in commerce by the registrant 
that temporally would have supported registration at the time the 
application was filed or the relevant allegation of use was made, or 
after registration, but before the petition to expunge was filed under 
subsection (a), or an ex parte expungement proceeding was instituted by 
the Director under subsection (h). Unless overturned on review of the 
examiner's decision, the Director shall issue an order cancelling the 
registration, in whole or in part, after the time for appeal has 
expired or any appeal proceeding has terminated.
  ``(h) Ex Parte Expungement by the Director.--
          ``(1) In general.--The Director may, on the Director's own 
        initiative, institute an ex parte expungement proceeding if the 
        Director discovers information that supports a prima facie case 
        of a mark having never been used in commerce on or in 
        connection with any good or service covered by a registration. 
        The Director shall promptly notify the registrant of such 
        determination, at which time the ex parte expungement 
        proceeding shall proceed according to the same procedures for 
        ex parte expungement established pursuant to subsection (d). If 
        the Director determines, based on the Director's own 
        initiative, to institute an expungement proceeding, the 
        Director shall transmit or make available the information that 
        formed the basis for that determination as part of the 
        institution notice sent to the registrant.
          ``(2) Rule of construction.--Nothing in this subsection may 
        be construed to limit any other authority of the Director.
  ``(i) Time for Institution.--
          ``(1) When petition may be filed, ex parte expungement 
        proceeding instituted.--A petition for ex parte expungement of 
        a registration under subsection (a) may be filed, or the 
        Director may institute on the Director's own initiative an ex 
        parte expungement proceeding of a registration under subsection 
        (h), at any time following the expiration of three years after 
        the date of registration and before the expiration of ten years 
        following the date of registration.
          ``(2) Exception.--Notwithstanding paragraph (1), for a period 
        of three years after the date of enactment of this Act, a 
        petition for expungement of a registration under subsection (a) 
        may be filed, or the Director may institute on the Director's 
        own initiative an ex parte expungement proceeding of a 
        registration under subsection (h), at any time following the 
        expiration of three years after the date of registration.
  ``(j) Limitation on Later Ex Parte Expungement Proceedings.--
          ``(1) No co-pending proceedings.--With respect to a 
        particular registration, while an ex parte expungement 
        proceeding is pending, no later ex parte expungement proceeding 
        can be instituted with respect to the same goods or services 
        that are the subject of a pending ex parte expungement 
        proceeding.
          ``(2) Estoppel.--With respect to a particular registration, 
        for goods or services previously subject to an instituted 
        expungement proceeding for which, in that proceeding, it was 
        determined that the registrant had used the mark for particular 
        goods or services, as relevant, and the registration was not 
        cancelled as to those goods or services, no further ex parte 
        expungement proceedings may be initiated as to those goods or 
        services, regardless of the identity of the petitioner.
  ``(k) Use in Commerce Requirement Not Altered.--Nothing in this 
section shall affect the requirement for use in commerce of a mark 
registered under section 1(a) or section 23.''.
  (b) New Grounds for Cancellation.--Section 14 of the Trademark Act of 
1946 (15 U.S.C. 1064) is amended--
          (1) by striking the colon at the end of paragraph (5) and 
        inserting a period;
          (2) by adding after paragraph (5) the following:
          ``(6) At any time after the three-year period following the 
        date of registration, if the registered mark has never been 
        used in commerce on or in connection with some or all of the 
        goods or services recited in the registration:''; and
          (3) in the flush left text, by inserting ``Nothing in 
        paragraph (6) shall be construed to limit the timing applicable 
        to any other ground for cancellation. A registration under 
        sections 44(e) or 66 shall not be cancelled pursuant to 
        paragraph (6) if the registrant demonstrates that any nonuse is 
        due to special circumstances that excuse such nonuse.'' after 
        ``identical certification mark is applied.''.
  (c) Ex Parte Reexamination.--The Trademark Act of 1946 (15 U.S.C. 
1066), as amended by subsection (a), is further amended by inserting 
after section 16A, the following new section:

``SEC. 16B. EX PARTE REEXAMINATION.

  ``(a) Petition for Reexamination.--Any person may file a petition to 
reexamine a registration of a mark on the basis that the mark was not 
in use in commerce on or in connection with some or all of the goods or 
services recited in the registration on or before the relevant date.
  ``(b) Relevant Date.--In this section, the term `relevant date' 
means, with respect to an application for the registration of a mark 
with an initial filing basis of--
          ``(1) section 1(a) and not amended at any point to be filed 
        pursuant to section 1(b), the date on which the application was 
        initially filed; or
          ``(2) section 1(b) or amended at any point to be filed 
        pursuant to section 1(b), the date on which--
                  ``(A) an amendment to allege use under section 1(c) 
                was filed; or
                  ``(B) the period for filing a statement of use under 
                section 1(d) expired, including all approved extensions 
                thereof.
  ``(c) Requirements for the Petition.--The petition, together with any 
supporting documents, shall--
          ``(1) identify the registration that is the subject of the 
        petition;
          ``(2) identify each good and service recited in the 
        registration for which it is alleged that the mark was not in 
        use in commerce on or in connection with on or before the 
        relevant date;
          ``(3) include a verified statement that sets forth the 
        elements of the reasonable investigation the petitioner 
        conducted to determine that the mark was not in use in commerce 
        on or in connection with the goods and services identified in 
        the petition on or before the relevant date, and any additional 
        facts that support the allegation that the mark was not in use 
        in commerce on or before the relevant date on or in connection 
        with the identified goods and services;
          ``(4) include supporting evidence on which the petitioner 
        relies; and
          ``(5) be accompanied by the fee prescribed by the Director.
  ``(d) Initial Determination; Institution.--
          ``(1) Prima facie case determination, institution, and 
        notification.--The Director shall, for each good or service 
        identified under subsection (c)(2), determine whether the 
        petition sets forth a prima facie case of the mark having not 
        been in use in commerce on or in connection with each such good 
        or service, institute an ex parte reexamination proceeding for 
        each good or service for which the Director determines that the 
        prima facie case has been set forth, and provide a notice to 
        the registrant and petitioner of the determination of whether 
        or not the proceeding was instituted. Such notice should 
        include a copy of the petition and any supporting documents and 
        evidence that were included with the petition.
          ``(2) Reasonable investigation guidance.--The Director shall 
        promulgate regulations regarding what constitutes a reasonable 
        investigation under subsection (c)(3) and the general types of 
        evidence that could support a prima facie case that the mark 
        was not in use in commerce on or in connection with a good or 
        service on or before the relevant date, but the Director shall 
        retain discretion to determine whether a prima facie case is 
        set out in a particular proceeding.
          ``(3) Determination by director.--Any determination by the 
        Director whether or not to institute a reexamination proceeding 
        under this section shall be final and non-reviewable, and shall 
        not prejudice any party's right to raise any issue and rely on 
        any evidence in any other proceeding, except as provided by 
        subsection (j).
  ``(e) Reexamination Procedures.--The procedures for reexamination 
shall be the same as those established under section 12(b) except that 
the Director shall promulgate regulations establishing and governing a 
proceeding under this section, which may include regulations that set 
response and extension times particular to this type of proceeding, 
which, notwithstanding section 12(b)(3) need not be extendable to six 
months; set limits governing the timing and number of petitions filed 
for a particular registration or by a particular petitioner or real 
parties in interest; and define the relation of a reexamination 
proceeding under this section to other proceedings concerning the mark.
  ``(f) Registrant's Evidence of Use.--A registrant's documentary 
evidence of use must be consistent with when `a mark shall be deemed to 
be in use in commerce' as defined in section 45, but shall not be 
limited in form to that of specimens as provided in section 1(a).
  ``(g) Examiner's Decision; Order to Cancel.--For each good or service 
for which it is determined that the registration should not have issued 
because the mark was not in use in commerce on or before the relevant 
date, the examiner shall find that the registration should be cancelled 
for each such good or service. Unless overturned on review of the 
examiner's decision, the Director shall issue an order cancelling the 
registration, in whole or in part, after the time for appeal has 
expired or any appeal proceeding has terminated.
  ``(h) Reexamination by Director.--
          ``(1) In general.--The Director may, on the Director's own 
        initiative, institute an ex parte reexamination proceeding if 
        the Director discovers information that supports a prima facie 
        case of the mark having not been used in commerce on or in 
        connection with some or all of the goods or services covered by 
        the registration on or before the relevant date. The Director 
        shall promptly notify the registrant of such determination, at 
        which time reexamination shall proceed according to the same 
        procedures established pursuant to subsection (e). If the 
        Director determines, based on the Director's own initiative, to 
        institute an ex parte reexamination proceeding, the Director 
        shall transmit or make available the information that formed 
        the basis for that determination as part of the institution 
        notice.
          ``(2) Rule of construction.--Nothing in this subsection may 
        be construed to limit any other authority of the Director.
  ``(i) Time for Institution.--A petition for ex parte reexamination 
may be filed, or the Director may institute on the Director's own 
initiative an ex parte reexamination proceeding, at any time not later 
than five years after the date of registration of a mark registered 
based on use in commerce.
  ``(j) Limitation on Later Ex Parte Reexamination Proceedings.--
          ``(1) No co-pending proceedings.--With respect to a 
        particular registration, while an ex parte reexamination 
        proceeding is pending, no later ex parte reexamination 
        proceeding can be instituted with respect to the same goods or 
        services that are the subject of a pending ex parte 
        reexamination proceeding.
          ``(2) Estoppel.--With respect to a particular registration, 
        for any goods or services previously subject to an instituted 
        ex parte reexamination proceeding for which, in that 
        proceeding, it was determined that the registrant had used the 
        mark for particular goods or services before the relevant date, 
        and the registration was not cancelled as to those goods or 
        services, no further ex parte reexamination proceedings may be 
        initiated as to those goods or services, regardless of the 
        identity of the petitioner.
  ``(k) Supplemental Register.--The provisions of subsection (b) apply, 
as appropriate, to registrations under section 23. Nothing in this 
section shall be construed to limit the timing of a cancellation action 
under section 24 of the Act.''.
  (d) Appeal.--
          (1) Appeal to trademark trial and appeal board.--Section 20 
        of the Trademark Act of 1946 (15 U.S.C. 1070) is amended by 
        inserting ``or a final decision by an examiner in an ex parte 
        expungement proceeding or ex parte reexamination proceeding'' 
        after ``registration of marks''.
          (2) Appeal to courts.--
                  (A) Expungement or ex parte reexamination.--Section 
                21(a)(1) of the Trademark Act of 1946 (15 U.S.C. 
                1071(a)(1)) is amended by striking ``or an applicant 
                for renewal'' and inserting the following: ``an 
                applicant for renewal, or a registrant subject to an ex 
                parte expungement proceeding or an ex parte 
                reexamination proceeding''.
                  (B) Exception.--Section 21(b)(1) of the Trademark Act 
                of 1946 (15 U.S.C. 1071(b)(1)) is amended by inserting 
                ``except for a registrant subject to an ex parte 
                expungement proceeding or an ex parte reexamination 
                proceeding'' before ``is dissatisfied''.
  (e) Technical and Conforming Amendments.--The Trademark Act of 1946 
(15 U.S.C. 1051 et seq.) is amended--
          (1) in section 15, by striking ``paragraphs (3) and (5)'' and 
        inserting ``paragraphs (3), (5) and (6)''; and
          (2) in section 26, by adding at the end the following: 
        ``Registrations on the supplemental register are subject to ex 
        parte expungement and ex parte reexamination under sections 16A 
        and 16B, respectively.''.
  (f) Deadline for Procedures.--Not later than one year after the date 
of the enactment of this Act, the Director shall issue regulations to 
carry out sections 16A and 16B of the Trademark Act of 1946, as added 
by subsections (a) and (c).
  (g) Effective Date.--The amendments made by this section shall take 
effect upon the expiration of the one year period beginning on the date 
of enactment of this Act, and shall apply to any mark registered 
before, on, or after that effective date.

SEC. 6. REBUTTABLE PRESUMPTION OF IRREPARABLE HARM.

  (a) Amendment.--Section 34 of the Trademark Act of 1946 (15 U.S.C. 
1116) is amended in subsection (a) by inserting after the first 
sentence the following new sentence: ``A plaintiff seeking any such 
injunction shall be entitled to a rebuttable presumption of irreparable 
harm upon a finding of a violation identified in this subsection in the 
case of a motion for a permanent injunction or upon a finding of 
likelihood of success on the merits for a violation identified in this 
subsection in the case of a motion for a preliminary injunction or 
temporary restraining order.''.
  (b) Rule of Construction.--The amendment made by subsection (a) shall 
not be construed to mean that a plaintiff seeking an injunction was not 
entitled to a presumption of irreparable harm before the date of the 
enactment of this Act.

SEC. 7. REPORT ON DECLUTTERING INITIATIVES.

  (a) Study.--The Comptroller General of the United States shall 
consult with the Director to conduct a study on the efforts of the 
Director during the period beginning 12 months after the date of the 
enactment of this Act and ending 30 months after the date of the 
enactment of this Act to address inaccurate and false claims of use in 
trademark applications and registrations. Inaccurate and false claims 
of use include any declaration of use by a trademark applicant or 
registrant that cannot be supported by use in commerce as defined in 
section 45 of the Trademark Act of 1946 (15 U.S.C. 1127) or the 
regulations relevant to the definition of specimens under section 1 of 
the Trademark Act of 1946 (15 U.S.C. 1051), as applicable.
  (b) Contents of Study.--In conducting the study under subsection (a), 
the Comptroller General shall assess the following:
          (1) With respect to sections 16A and 16B of the Trademark Act 
        of 1946, as added by section 5--
                  (A) the number of petitions filed under each such 
                section for which a decision not to institute was 
                issued;
                  (B) the number of petitions filed under each such 
                section for which a decision to institute was issued;
                  (C) the number of in-process and completed 
                proceedings instituted under each such section, 
                including any proceedings instituted by the Director's 
                own initiative;
                  (D) the average time taken to resolve proceedings 
                instituted under each such section, including the 
                average time between--
                          (i) the filing of a petition under each such 
                        section and an examiner's final decision under 
                        section 16A(g) and 16B(g), or the last decision 
                        issued by the examiner if the registrant failed 
                        to respond to the latest-in-time decision by 
                        the examiner; and
                          (ii) the institution of a proceeding under 
                        each such section, including any proceedings 
                        instituted by the Director's own initiative, 
                        and an examiner's final decision under section 
                        16A(g) and 16B(g), or the last decision issued 
                        by the examiner if the registrant fails to 
                        respond to the latest-in-time decision by the 
                        examiner;
                  (E) the number of appeals of decisions of examiners 
                to the Trademark Trial and Appeal Board and to the 
                courts for each such proceeding; and
                  (F) an accounting of the final outcome of each such 
                proceeding instituted by identifying the number of 
                goods or services for which such proceedings were 
                instituted, and the number of goods or services for 
                each involved registration that were cancelled pursuant 
                to such proceedings.
          (2) With respect to section 1(f) of the Trademark Act of 
        1946, as added by section 3--
                  (A) the number of third-party submissions filed under 
                such section for which the third-party asserts in the 
                submission that the mark has not been used in commerce; 
                and
                  (B) of those applications identified in paragraph (A) 
                above, the number of applications in which the third-
                party submission evidence is included in the 
                application; and
                  (C) of those applications identified in paragraph (B) 
                above, the number of applications--
                          (i) refused registration based on an 
                        assertion by the examiner that the mark has not 
                        been used in commerce; and
                          (ii) for which the examiner requested 
                        additional information from the applicant 
                        related to claims of use.
          (3) The effectiveness of--
                  (A) the proceedings under sections 16A and 16B of the 
                Trademark Act of 1946, as added by section 5, in 
                addressing inaccurate and false claims of use in 
                trademark registrations; and
                  (B) any additional programs conducted by the Director 
                designed to address inaccurate and false claims of use 
                in trademark applications and registrations, including 
                the post-registration use audit, as implemented at the 
                date of enactment of this Act under sections 2.161(h) 
                and 7.37(h) of title 37, Code of Federal Regulations.
  (c) Report to Congress.--Not later than three years after the date of 
enactment of this Act, the Comptroller General of the United States 
shall submit to the Committee on the Judiciary of the House of 
Representatives and the Committee on the Judiciary of the Senate a 
report--
          (1) on the results of the study conducted under this section; 
        and
          (2) that includes any recommendations, based on the results 
        of the study, for any changes to laws or regulations that will 
        improve the integrity of the trademark register or reduce 
        inaccurate or false claims of use.

SEC. 8. AMENDMENTS TO CONFIRM AUTHORITY OF THE DIRECTOR.

  (a) Amendments.--
          (1) Section 18 of the Trademark Act of 1946 (15 U.S.C. 1068) 
        is amended by inserting after ``established in the 
        proceedings'' the following: ``. The authority of the Director 
        under this section includes the authority to reconsider, and 
        modify or set aside, a decision of the Trademark Trial and 
        Appeal Board''.
          (2) Section 20 of the Trademark Act of 1946 (15 U.S.C. 1070) 
        is amended by inserting at the end the following: ``The 
        Director may reconsider, and modify or set aside, a decision of 
        the Trademark Trial and Appeal Board under this section.''.
          (3) Section 24 of the Trademark Act of 1946 (15 U.S.C. 1092) 
        is amended by inserting after ``shall be canceled by the 
        Director'' the following: ``, unless the Director reconsiders 
        the decision of the Board, and modifies or sets aside, such 
        decision''.
  (b) Rules of Construction.--
          (1) Authority before date of enactment.--The amendments made 
        by subsection (a) may not be construed to mean that the 
        Director lacked the authority to reconsider, and modify or set 
        aside, a decision of the Trademark Trial and Appeal Board 
        before the date of the enactment of this Act.
          (2) Authority with respect to particular decisions.--The 
        amendments made by subsection (a) may not be construed to 
        require the Director to reconsider, modify, or set aside any 
        particular decision of the Trademark Trial and Appeal Board.

    Amend the title so as to read:
    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 proceedings 
relating to the validity of marks, to provide for a rebuttable 
presumption of irreparable harm in certain proceedings, and for 
other purposes.

                          Purpose and Summary

    H.R. 6196, the ``Trademark Modernization Act of 2020'' or 
the ``TM Act of 2020,'' updates the Trademark Act of 1946\1\ by 
modernizing trademark examination procedures, establishing new, 
more efficient proceedings to clear registrations from the 
trademark register for marks for which proper use in commerce 
was not made, clarifying the standard for injunctive review in 
trademark infringement cases, and confirming the authority of 
the Director of the U.S. Patent and Trademark Office (USPTO) to 
reconsider decisions of the Trademark Trial and Appeal Board 
(TTAB).
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    \1\In this report, the Trademark Act of 1946 is referred to by its 
more commonly used name, the Lanham Act.
---------------------------------------------------------------------------

                Background and Need for the Legislation


              A. TRADEMARK LAW AND REGISTRATION GENERALLY

    Trademarks are at the foundation of a successful commercial 
marketplace. Trademarks allow companies to identify their goods 
and services, and they ensure that consumers know whose product 
they are buying. ``The theory underlying trademark law is that 
producers will invest in product quality only if they can 
benefit from the reputation-related rewards of that investment. 
Trademarks enable producers to build goodwill, and trademark 
protection prevents others from trading on that goodwill.''\2\ 
By guarding against deception in the marketplace, trademarks 
also serve an important consumer protection role.\3\
---------------------------------------------------------------------------
    \2\Barton Beebe & Jeanne C. Fromer, Are We Running Out of 
Trademarks? An Empirical Study of Trademark Depletion and Congestion, 
131 Harv. L. Rev. 945, 954 (2018).
    \3\Connie Davis Powell, We All Know It's a Knock-Off! Re-Evaluating 
the Need for the Post-Sale Confusion Doctrine in Trademark Law, 14 N.C. 
J. L. & Tech. 1, 9 (2012).
---------------------------------------------------------------------------
    A trademark is any word, symbol, or device that identifies 
the source of a product or service. Trademarks serve two 
principal roles: to facilitate legitimate businesses and to 
protect consumers.\4\ Trademark rights are based upon common 
law; such rights begin to exist when a mark starts to be used 
in commerce for particular goods or services. Trademark 
protection enables consumers to rely on the presence of a 
trademark as an indicator of the quality of the products or 
services to which the mark is attached or with which the mark 
is used.
---------------------------------------------------------------------------
    \4\S. Rep. No. 1333, 79th Cong., 2d Sess. 3 (1946).
---------------------------------------------------------------------------
    In addition to rights that exist at common law, the Lanham 
Act provides important federal protections for trademarks, 
including a registration system that helps to ensure that 
trademarks are fully protected, supporting the free flow of 
commerce.\5\ Federal registration ``confers important legal 
rights and benefits on trademark owners who register their 
marks.''\6\ Registration on the ``principal register'' of the 
USPTO serves as ``constructive notice of the registrant's claim 
of ownership'' of the mark.\7\ Once a trademark is registered, 
the trademark owner can claim nationwide rights in the mark, 
even if it is not yet being used throughout the country.
---------------------------------------------------------------------------
    \5\Matal v. Tam, 137 S. Ct. 1744, 1752 (2017).
    \6\B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 
1300 (2015) (internal quotation marks omitted).
    \7\15 U.S.C. Sec.  1072.
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    B. THREATS TO THE PROPER FUNCTIONING OF THE REGISTRATION SYSTEM

    To have a well-functioning trademark system, the federal 
trademark register needs to accurately reflect the trademarks 
currently in use. Having marks that are not currently in use on 
the U.S. register makes it more difficult for legitimate 
businesses to clear and register their own marks.\8\ In recent 
years, it has become clear that whether purposeful or not, 
registrations are being maintained for marks that are not 
properly in use in commerce.\9\
---------------------------------------------------------------------------
    \8\Matthew D. Asbell, Evaluating the USPTO's Efforts to Clean up 
the U.S. Register, Ladas & Parry (Feb. 14, 2017), https://ladas.com/
education-center/5658-2/.
    \9\Counterfeits and Cluttering: Emerging Threats to the Integrity 
of the Trademark System and the Impact on American Consumers and 
Businesses: Hearing Before the Subcomm. on Cts., Intell. Prop., and the 
Internet of the H. Comm. on the Judiciary, 116th Cong. (2019) (written 
statement of Mary Boney Denison, Commissioner for Trademarks, U.S. 
Patent and Trademark Office at 4); Department of Commerce, Changes in 
Requirements for Affidavits or Declarations of Use, Continued Use, or 
Excusable Nonuse in Trademark Cases, 81 Fed. Reg. 40590 (June 22, 2016) 
(discussing a post-registration audit pilot program in which in 51% of 
the 500 registrations selected for the pilot, the registrants failed to 
supply additional verified proof of use on specific goods/services for 
which use was initially claimed).
---------------------------------------------------------------------------
    This so-called ``cluttering'' has real-world consequences, 
which become particularly acute as the availability of marks is 
depleted. Testimony before the Subcommittee on Courts, 
Intellectual Property, and the Internet highlighted the problem 
of depletion of effective trademarks. Professors Barton Beebe 
and Jeanne Fromer explained:
    Trademark depletion is a problem because it undermines 
trademark law's goals of promoting efficient and fair 
competition and minimizing consumer search costs. In 
particular, as depletion worsens, entrants face higher costs 
than incumbents had faced earlier in locating or devising a 
mark that is not confusingly similar with already registered 
marks and that is competitively effective. Moreover, entrants 
are generally constrained to settle for less effective marks, 
such as longer and more complex marks, that minimize the 
advertising power of these marks.\10\
---------------------------------------------------------------------------
    \10\Counterfeits and Cluttering: Emerging Threats to the Integrity 
of the Trademark System and the Impact on American Consumers and 
Businesses: Hearing Before the Subcomm. on Cts., Intell. Prop., and the 
Internet of the H. Comm. on the Judiciary, 116th Cong. (2019) (written 
statement of Professors Barton Beebe and Jeanne Fromer, New York 
University School of Law at 16).
---------------------------------------------------------------------------
    Their research found that in 2016, 23.5% of the most 
frequently used words in American English, which also account 
for 74% of all word usage, had already been claimed as single-
word marks.\11\ They further estimated that 97.1% of the most 
frequently used words in American English, which account for 
89.1% of all word usage in the language, are confusingly 
similar with a mark already registered.\12\
---------------------------------------------------------------------------
    \11\Id. at 8.
    \12\Id. at 10.
---------------------------------------------------------------------------
    Trademark law is meant to encourage competition. But that 
competition is ``difficult to achieve if people are having to 
settle for something other than their preferred ways to mark 
their brands. The problem is only made worse if people end up 
having to spend money creating new trademarks over and over 
again and go through the process of rebranding, since these 
efforts may end up just confusing consumers and hurting the 
brand even further.''\13\
---------------------------------------------------------------------------
    \13\Shivani Patel, The IP of IPAs: A Look into Trademark 
Infringement in the Craft Beer Industry, 26 J. Intell. Prop. L. 249, 
252 (2019).
---------------------------------------------------------------------------
    A recent rise in fraudulent trademark applications has put 
further strain on the accuracy of the federal register. As 
Stephen Lee, the Chief Intellectual Property Counsel for Target 
explained in testimony before the Senate Subcommittee on 
Intellectual Property: ``When the United States Patent and 
Trademark Office (USPTO) approves a fraudulent trademark 
application, it can effectively block our legitimate efforts to 
trademark our owned brand products that we develop within our 
teams at Target. It is imperative to maintain the integrity of 
our U.S. trademark system and not allow bad actors to gain 
valid trademarks in the largest, most developed market in the 
world.''\14\
---------------------------------------------------------------------------
    \14\Fraudulent Trademarks: How They Undermine the Trademark System 
and Harm American Consumers and Businesses: Hearing Before the Subcomm. 
on Intell. Prop. of the S. Comm. on the Judiciary, 116th Cong. (2019) 
(written statement of Stephen Lee, Chief Intellectual Property Counsel, 
Target at 2).
---------------------------------------------------------------------------
    One apparent source of fraudulent applications has been 
China. Although there has been an increase in foreign filings 
more generally,\15\ as of September 2018, there had been more 
than an 1,100 percent increase in trademark applications 
originating from China over the previous six years, far 
outpacing growth from any other country.\16\ Through various 
investigations, it has become clear that a significant number 
have fraudulent claims of use with suspicious and/or fake 
specimens. One investigation reviewed 10,000 trademark 
applications filed with the USPTO the first week of May 2019 
and found ``a significant number of suspicious specimens from 
applications originating from China,'' and an ``evolution in 
tactics being used when submitting such illegitimate 
specimens.''\17\
---------------------------------------------------------------------------
    \15\Jacob Gershman, Flood of Trademark Applications From China 
Alarms U.S. Officials, Wall Street J. (May 5, 2018), https://
www.wsj.com/articles/flood-of-trademark-applications-fromchinaalarms-u-
s-officials-1525521600.
    \16\U.S. Patent and Trademark Office, Trademark Public Advisory 
Committee Annual Report, at 5 (2018), https://www.uspto.gov/sites/
default/files/documents/TPAC_2018_Annual_Report.pdf. One potential 
cause of the significant increase in trademark applications from China 
may be local Chinese government subsidies to applicants. Gershman, 
supra note 15.
    \17\Tim Lince, Fraudulent Specimens at the USPTO: Five Takeaways 
from Our Investigation--Share Your Experience, World Trademark Rev. 
(June 19, 2019), https://www.worldtrademarkreview.com/brand-management/
fraudulent-specimens-uspto-five-takeaways -our-investigation-share-
your; see also Christina Frangiosa, USPTO's Recently Announced Pilot 
Program on Fraudulent Specimens, Privacy and IP Law Blog (June 12, 
2018), http://privacyandiplawblog.com/2018/06/uspto-pilot-program-
fraudulent-specimens/#more-611.
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    Although trademark applications go through an examination 
process, some of these forms of fraud are difficult to detect 
in individual applications (even if patterns of fraud can be 
seen across multiple applications), leading to illegitimate 
registrations.\18\ Although the USPTO can try to develop better 
systems to detect fraud during the examination process, its 
authority to reconsider applications after registration is 
currently limited. Under existing law, there is no mechanism by 
which the USPTO can cancel a registration through a formal ex 
parte process (i.e., a process resembling the initial 
examination process, which is solely between the Office and the 
trademark holder after the proceeding begins, instead of a 
process between two parties as in district court or in the 
TTAB's inter partes cancellation proceedings). The only avenue 
for agency review is through an inter partes cancellation 
process in which interested third parties can petition to 
cancel a registration before the TTAB.\19\ However, because in 
many respects cancellation proceedings resemble district court 
litigation,\20\ they are often expensive and time 
consuming.\21\ For small- and medium-sized businesses, the cost 
of filing and the uncertainty of the result is often a 
deterrent in filing a cancellation action.\22\
---------------------------------------------------------------------------
    \18\For a recent study of likely fraudulent applications that 
matured to registration, see Barton Beebe & Jeanne C. Fromer, Fake 
Trademark Specimens: An Empirical Analysis, 120 Colum. L. Rev. F. 217 
(2020).
    \19\15 U.S.C. Sec.  1064.
    \20\See B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 
143 (2015).
    \21\Beebe and Fromer Statement, supra note 10, at 19 (citing 
studies finding that the average cost of a trademark opposition or 
cancellation in the United States ranges between $95,000 to $500,000).
    \22\Steve Brachmann, Taking on Trademark Trolls and Frivolous 
Marks, Trademark Watch Dawgs Wades Into Divisive Waters, IP Watchdog 
(Apr. 11, 2019), https://www.ipwatchdog.com/2019/04/11/trademark-watch-
dawgs-wades-into-divisive-waters-trademark-trolls/id=108151/; 
Fraudulent Trademarks: How They Undermine the Trademark System and Harm 
American Consumers and Businesses: Hearing Before Subcomm. on Intell. 
Prop. of the S. Comm. on the Judiciary, 116th Cong. (2019) (written 
statement of Thomas Williams, Lecturing Fellow, Duke Law School at 3).
---------------------------------------------------------------------------
    H.R. 6196 creates two new ex parte processes that allow the 
Director or a third party to initiate a challenge to the 
propriety of trademark's use that can allow the Office to 
cancel a registration when the covered trademark was not 
properly used.
    H.R. 6196 also includes two sections that provide 
improvements to the trademark examination process. These 
improvements will make examination more efficient, and more 
effective at clearing applications that may block later-filed 
applications from proceeding to registration.

      C. OPERATION OF NEW EXAMINATION AND CANCELLATION PROVISIONS

1. Providing for third-party submission of evidence during examination 
        (Section 3)

    Current USPTO practice permits the informal submission of 
evidence by third parties during the examination process.\23\ 
This informal process allows third parties to bring to the 
attention of the Office evidence bearing on the registrability 
of the mark. Because this process is informal, and is not 
currently codified, the Office's practices regarding it are 
similarly informal. Under the current informal practice, there 
is no time limit for when the evidence must reach an examiner, 
and it is possible that evidence reaches an examiner after an 
application has been initially approved to proceed to 
registration. The delay in evidence reaching an examiner makes 
for an inefficient and uncertain examination process that H.R. 
6196 seeks to solve. Historically, the USPTO also has not 
charged a fee for the submission despite there being a cost to 
process the informal submissions of evidence.
---------------------------------------------------------------------------
    \23\Trademark Manual of Examining Procedure Sec. 1715 (Oct. 2018), 
https://tmep.uspto.gov/RDMS/TMEP/current#/Oct2018/TMEP-1700d1e853.html.
---------------------------------------------------------------------------
    Section 3 of the bill amends section 1 of the Lanham Act by 
adding a new subsection (f), which expressly allows third 
parties to submit evidence that may be relevant to the 
examination of an application for trademark registration, 
consistent with the current USPTO informal practice. Evidence 
submitted must relate to a relevant ground for refusal. 
Submissions are to be accompanied by a concise description of 
the evidence and should identify the ground of refusal to which 
the evidence relates. Extensive legal argument should not be 
provided with the submission. A party that submits evidence 
under this new provision does not have a right to review of a 
decision not to accept evidence submitted.
    To improve the functioning and efficiency of the third-
party submission process, section 3 of the bill provides 
express statutory authority for the USPTO to charge a fee for 
the submission. It also provides a two-month time limit by 
which the Office must act on a third-party submission. The time 
limit helps ensure that relevant evidence is put before a 
trademark examiner before he or she takes initial action on an 
application.

2. Providing for flexible response periods (Section 4)

    Currently, section 12(b) of the Lanham Act,\24\ requires 
that the USPTO provide an applicant six months to respond to 
actions issued during examination, a vestige of the original 
1946 Act.\25\ The six-month period reflects a time when all 
correspondence was done by mail. Today, the USPTO mandates 
electronic filing for most trademark papers.\26\ In most cases, 
applicants are notified instantly when an examiner issues an 
action requesting a response.
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    \24\15 U.S.C. Sec.  1062(b).
    \25\Act of July 5, 1946, ch. 540, Title I, Sec.  12, 60 Stat. 432.
    \26\37 C.F.R. Sec.  2.23.
---------------------------------------------------------------------------
    H.R. 6196 amends section 12(b) of the Trademark Act to 
allow the Office to set response periods, by regulation, for a 
time period between 60 days and six months, with the option for 
an applicant to request extensions to a full six-month period. 
The flexibility in setting response times will promote 
efficiency in examination, and allow applications that would 
otherwise be abandoned, to be abandoned earlier. This earlier 
abandonment can be important for other trademark applicants, 
because an earlier-filed application can delay examination of a 
later-filed application if the marks are similar.
    It is expected that the Director will consider input of 
stakeholders in any process to set response times at less than 
six months and will, in setting any particular response times, 
assess the need for longer or shorter periods based on 
information provided by stakeholders in the rulemaking process. 
Additionally, it is intended that response time periods should 
be set categorically (e.g., substantive office action 
responses, administrative revisions, designation of counsel) by 
regulation such that different response times will not be set 
on an application-by-application basis for the same type or 
category of response.

3. Creating new ex parte cancellation proceedings and new non-use 
        ground for cancellation before the TTAB (Section 5)

    Section 5 of H.R. 6196 adds two ex parte cancellation 
proceeding options to allow third parties to request, or the 
Director to initiate at the Director's own initiative, ex parte 
cancellation of a registration when proper use of a mark in 
commerce has not been made.\27\ It also adds a new non-use 
ground for cancellation that allows a petitioner to allege that 
a mark has never been used in commerce as a basis for 
cancellation before the TTAB.
---------------------------------------------------------------------------
    \27\A registration can be challenged for fewer than all the goods 
or services covered by it. Cancellation of a registration of a mark, as 
discussed in this report, refers to the particular goods or services 
with which a mark is alleged to have not been used, and does not refer 
to the cancellation of an entire registration unless it is alleged that 
the mark was properly used for none of the goods or services covered by 
the registration.
---------------------------------------------------------------------------
    Section 5's additions to the Lanham Act respond to concerns 
that registrations persist on the trademark register despite a 
registrant not having made proper use of the mark covered by 
the registration. In particular, the new ex parte proceedings 
allow for more efficient, and less costly and time consuming 
alternatives to inter partes cancellation. New section 16A of 
the Lanham Act provides for ex parte expungement of a 
registration of a mark that has never been used in commerce. 
New section 16B of the Lanham Act provides for ex parte 
reexamination of registration of a mark that was not in use in 
commerce at the time the application or the allegation of use 
was filed before registration.
    Sections 16A and 16B complement each other. For technical 
clarity, ex parte expungement and ex parte reexamination are 
separated into two sections of the Lanham Act. The statutory 
separation should not be interpreted to prohibit the 
combination of particular proceedings under 16A and 16B if such 
combination could create administrative efficiencies, e.g., 
when facts and evidence support petitions both for ex parte 
expungement and ex parte reexamination, and the timing permits 
both types of proceedings to be initiated.

a. Ex parte expungement

    Ex parte expungement under new section 16A of the Lanham 
Act provides for proceedings that examine a mark that is 
alleged to have never been used in commerce. ``It is not 
federal registration, but use of a designation as a mark that 
creates trademark rights in a designation.''\28\ Ex parte 
expungement provides a mechanism to cancel a registration for a 
mark that never had the necessary underlying use to confer 
trademark rights.
---------------------------------------------------------------------------
    \28\2 Mccarthy on Trademarks and Unfair Competition Sec.  16:18 
(5th ed. 2020); see also Allard Enterprises, Inc. v. Adv. Programming 
Resources, Inc., 146 F.3d 350, 356 (6th Cir. 1998) (``One of the 
bedrock principles of trademark law is that trademark or service mark 
ownership is not acquired by federal or state registration. Rather, 
ownership rights flow only from prior appropriation and actual use in 
the market.'') (internal quotation marks omitted).
---------------------------------------------------------------------------
    The timing provisions for an ex parte expungement permit a 
proceeding to be initiated, by petition or by the Director's 
own initiative, three years following the date of registration. 
The three-year period provides post-registration repose for all 
registrations, including those filed pursuant to an 
international agreement that permits registration in the United 
States without demonstrating use at the time of application or 
registration.\29\ With a limited exception for the three years 
following enactment, an expungement proceeding must be 
initiated before the expiration of ten years following the date 
of registration.
---------------------------------------------------------------------------
    \29\15 U.S.C. Sec. Sec.  1126, 1141f.
---------------------------------------------------------------------------

b. Ex parte reexamination

    Ex parte reexamination under new section 16B of the Lanham 
Act provides for review of whether a mark covered by a 
registration for which use was claimed at the time of 
registration was, in fact, in use in commerce at the time the 
application or the allegation of use was filed before 
registration.
    The timing provisions for ex parte reexamination permit a 
proceeding to be initiated, by petition or by the Director's 
own initiative, in the first five years following the date of 
registration.

c. Shared procedures for ex parte expungement and ex parte 
        reexamination

    Both sections 16A and 16B set out procedural requirements 
for the new proceedings, and give the Director authority to 
promulgate regulations consistent with the requirements set 
forth in the bill. The procedures for both proceedings are 
identical in many respects.
    Both ex parte expungement and reexamination evaluate ``use 
in commerce.'' ``Use in commerce'' has a single definition in 
the Lanham Act.\30\ Thus, ``use in commerce'' in the bill 
follows that definition, and a registrant's evidence of use 
must be consistent with that definition, including the case law 
interpreting the term. Sections 16A and 16B do not refer to 
``specimens.'' Thus, if the documentary evidence of use 
presented by the registrant is consistent with the definition 
of ``use in commerce'' in section 45 of the Lanham Act, the 
form of evidence need not follow the rules or practices of the 
USPTO for specimens under section 1(a) of the Lanham Act.\31\
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    \30\15 U.S.C. Sec.  1127.
    \31\The use of the term ``documentary'' in 16A(e) and 16B(f) in 
intended to indicate that testimonial evidence alone is insufficient 
and must be supported by additional corroborating evidence, e.g., 
examples of product packaging, labels, point of sale displays, 
advertising (for services).
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    A proceeding under section 16A or 16B may be initiated by 
third-party request under the petition process detailed in 
section 16A(b)-(c) and section 16B(c)-(d). A petition must 
include a verified statement setting forth the reasonable 
investigation undertaken by the petitioner to determine that 
the mark was and/or is not in proper use as relevant for the 
proceeding under 16A or 16B. Additional facts, if any, on which 
the petitioner relies must also be verified.
    The Director is authorized to promulgate rules that 
establish procedures for the new proceedings. As a general 
matter, the conduct of these new proceedings follows the 
procedures for examination under subsection (b) of section 12 
of the Lanham Act. In establishing procedures for the new 
proceedings, the Director may consider the need for efficiency, 
the need to allow sufficient process for a trademark registrant 
to respond, and the need to guard against abuse of the new 
proceedings. In considering how long to set the time for 
response to an initial institution, the Director should take 
into account the need for a registrant to research and collect 
evidence sufficient to show use of the mark in commerce. Any 
timing consideration should take into account that in some 
proceedings the number of goods or services at issue may be 
numerous, and that the collection of evidence may take some 
time. This concern should be balanced against an expectation 
that the proceedings be expeditious, and that undue delay could 
prejudice a petitioner who legitimately seeks to clear unused 
marks from the register.
    In addition to requiring the Director to promulgate general 
procedures for the new proceedings, H.R. 6196 also requires the 
Director to promulgate rules that provide guidance on what 
constitutes a reasonable investigation under 16A(b)(3) and 
16B(c)(3). It is understood that what constitutes a reasonable 
investigation may vary across industry and by types of goods 
and services. For example, evidence of sales of a large, 
specialized commercial product may not be returned by the 
results of internet searches, and may require additional 
efforts to satisfy the showing needed to support a prima facie 
case. Without foreclosing the possibility that there may be 
some exceptions, it is not expected that the results of a 
single internet search-engine search would be sufficient to 
support a prima facie case in either ex parte expungement or ex 
parte reexamination.
    Whether initiated by petition, or on the Director's own 
initiative, institution of an ex parte expungement proceeding 
or ex parte reexamination proceeding requires that a prima 
facie case be set forth. The meaning of ``prima facie case'' in 
the context of the bill is intended to have the same 
``reasonable predicate'' meaning that that term has been given 
in the context of trademark examination.\32\ If a prima facie 
case is set out, rebuttal evidence and argument are the 
registrant's province.\33\ If a registrant offers rebuttal 
evidence or argument, the examiner must consider all evidence 
and arguments for and against cancellation before making a 
final determination.\34\
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    \32\In re Pacer Tech., 338 F.3d 1348, 1351 (Fed. Cir. 2003); In re 
Loew's Theatres, Inc., 769 F.2d 764, 768 (Fed. Cir. 1985); see also In 
re Etter, 756 F.2d 852, 855-59 (Fed. Cir. 1985) (explaining that the 
same burden shifting procedure applicable to initial examination is 
applicable to reexamination in the patent context).
    \33\Pacer Tech, 338 F.3d. at 1352; In re Gyulay, 820 F.2d 1216, 
1217 (Fed. Cir. 1987).
    \34\In re Kumar, 418 F.3d 1361, 1366 (Fed. Cir. 2005) (``When 
rebuttal evidence is provided, the prima facie case dissolves, and the 
decision is made on the entirety of the evidence.''); accord Pacer 
Tech., 338 F.3d at 1352.
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    The filing of a petition under section 16A or 16B should be 
understood to fall within the meaning of ``proceeding'' under 
37 C.F.R Sec. Sec.  2.11 and 2.17(a). It is expected, 
therefore, that a petitioner that is not domiciled within the 
United States or its territories would be represented by an 
attorney in the filing of a petition for ex parte expungement 
or ex parte reexamination consistent with those provisions.
    Finally, consistent with examination practice, the Director 
may permit the suspension of ex parte expungement and ex parte 
reexamination procedures under terms similar to those currently 
set forth in 37 C.F.R. Sec.  2.67, which provides that action 
by the USPTO may be suspended for a reasonable time for good 
and sufficient cause, including when a proceeding is pending 
before the Office or a court.

d. New non-use ground for cancellation

    Subsection (b) of section 5 of the bill creates a new 
ground for cancellation under section 14 of the Lanham Act. 
This ground for cancellation follows substantively the ``never 
used'' construct that applies in ex parte expungement. Unlike 
the ex parte procedure, the new ground for cancellation before 
the TTAB is not limited to proceedings brought within the first 
ten years post-registration. The ground is available for 
cancellation any time after the first three years post-
registration.

         D. PRESUMPTION OF IRREPARABLE HARM IN TRADEMARK CASES

1. Restoring the presumption

    The Lanham Act serves the dual purpose of both protecting 
rights holders from damage to their goodwill and reputation and 
protecting consumers from confusion or deception when those 
rights are violated. One of the hallmarks of the Lanham Act's 
protections is the consideration of whether one party's use of 
a trademark is likely to cause confusion with another party's 
trademark.\35\ Because harm based on confusion is unique and 
not easily quantifiable, rights holders often seek remedy 
through injunctive relief.\36\
---------------------------------------------------------------------------
    \35\See Federal Exp. Corp. v. Federal Espresso, Inc., 201 F.3d 168, 
174 (2d Cir. 2000).
    \36\Anne Gilson LaLonde & Jerome Gilson, Adios! To the Irreparable 
Harm Presumption in Trademark Law, 107 Trademark Rep. 913, 921 (2017) 
(``The classic presumption also assumed that injury to reputation or 
goodwill cannot easily be quantified or adequately compensated with 
money damages. It is often next to impossible to prove such evanescent 
injury at the preliminary injunction stage. Consumer confusion, 
particularly that generated by intentional infringement, would 
doubtlessly erode market share to an unquantifiable degree.'').
---------------------------------------------------------------------------
    Generally, to obtain an injunction, a plaintiff must 
establish liability, or in the case of a preliminary 
injunction, a likelihood of success on the merits, and 
demonstrate that (1) absent relief, the plaintiff will suffer 
irreparable harm, (2) remedies available at law, such as 
monetary damages, are inadequate to compensate for that injury, 
(3) the balance of equities tips in the plaintiff's favor, and 
(4) an injunction is in the public interest.\37\ The issuance 
of an injunction means, for example, that two products with 
confusingly similar marks do not both remain on the market, 
providing forward-looking relief to the prevailing party's 
brand and goodwill and ensuring that consumers cease to be 
confused or misled about whose products they are purchasing.
---------------------------------------------------------------------------
    \37\Weinberger v. Romero-Barcelo, 456 U.S. 305, 311-12 (1982); see 
also eBay Inc., v. MercExchange, LLC, 547 U.S. 388, 391 (2006) 
(summarizing the requirements for a permanent injunction that flow from 
``well established principles of equity'').
---------------------------------------------------------------------------
    Historically, federal courts considering injunctive relief 
for trademark infringement claims had nearly uniformly held 
that success on the merits of a trademark claim in the context 
of a permanent injunction--or a showing of likely success on 
the merits in the context of a preliminary injunction--created 
a rebuttable presumption of irreparable harm that was 
sufficient to satisfy that prerequisite for relief.\38\ In the 
courts' view, ``the damages occasioned by trademark 
infringement are by their very nature irreparable and not 
susceptible of adequate measurement for remedy at law.''\39\ 
For the trademark system to function properly, appropriate 
relief must be available when a company's trademark is 
infringed.
---------------------------------------------------------------------------
    \38\See, e.g., Ty, Inc. v. Jones Grp., Inc., 237 F.3d 891, 902-03 
(7th Cir. 2001); Societe Des Produits Nestle, S.A. v. Casa Helvetia, 
Inc., 982 F.2d 633, 640 (1st Cir. 1992); see also Fraudulent 
Trademarks: How They Undermine the Trademark System and Harm American 
Consumers and Businesses: Hearing Before the Subcomm. on Intell. Prop. 
of the S. Comm. on the Judiciary, 116th Cong. (2019) (written statement 
of Douglas A. Rettew, Partner, Finnegan, Henderson, Farabow, Garrett & 
Dunner, LLP at 8-10); Counterfeits and Cluttering: Emerging Threats to 
the Integrity of the Trademark System and the Impact on American 
Consumers and Businesses: Hearing Before the Subcomm. on Cts., Intell. 
Prop., and the Internet of the H. Comm. on the Judiciary, 116th Cong. 
(2019) (written statement of Peter M. Brody, Partner, Ropes & Gray LLP 
at 6).
    \39\Processed Plastic Co. v. Warner Commc'ns, 675 F.2d 852, 858 
(7th Cir. 1982).
---------------------------------------------------------------------------
    Another justification for the issuance of injunctions is 
that it is typically difficult to obtain monetary relief in 
Lanham Act cases--``[a] plaintiff that can prove identifiable 
lost sales from trademark infringement can generally recover 
the losses occasioned by those sales, though a significant 
majority of successful trademark cases nonetheless deny an 
award of damages,'' and an award of profits ``is traditionally 
limited to cases in which the defendant is adjudged a willful 
infringer.''\40\ Indeed, ``it is not only possible but common 
to win your case and still not be awarded money,''\41\ leaving 
injunctive relief as some plaintiffs' only recourse. This is 
different than in the patent law context, where damages in the 
form of a ``reasonable royalty'' or ``lost profits''' have a 
long history of being awarded to compensate a patent owner for 
infringement.\42\
---------------------------------------------------------------------------
    \40\Mark A. Lemley, Did eBay Irreparably Injure Trademark Law?, 92 
Notre Dame L. Rev. 1795, 1807 (2017).
    \41\Id. at 1808.
    \42\See, e.g., Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 
1324 (Fed. Cir. 2009) (``Two alternative categories of infringement 
compensation are the patentee's lost profits and the reasonable royalty 
he would have received through arms-length bargaining.''); 35 U.S.C. 
Sec.  284 (damages to be awarded are ``in no event less than a 
reasonable royalty for the use made of the invention by the 
infringer.'').
---------------------------------------------------------------------------
    In 2006, the Supreme Court decided eBay, Inc. v. 
MercExchange LLC,\43\ a patent infringement case in which it 
held irreparable harm could not be presumed upon a showing of 
patent infringement, requiring a plaintiff to affirmatively 
demonstrate the elements of the Court's four-factor test for 
injunctive relief, including the irreparable harm factor.\44\ 
Although the Court did not mention trademark claims or the 
Lanham Act in its opinion, some courts have since extended eBay 
to trademark disputes, departing from the long-standing 
presumption of irreparable harm.\45\ Other courts continue to 
apply the presumption in trademark disputes, creating a circuit 
split.\46\ The Supreme Court has not clarified whether eBay is 
intended to apply to trademark disputes and has twice denied 
certiorari on the issue.\47\
---------------------------------------------------------------------------
    \43\547 U.S. 388 (2006).
    \44\Id. at 391.
    \45\E.g., Ferring Pharm., Inc. v. Watson Pharm., Inc., 765 F.3d 
205, 206 (3d Cir. 2014) (``[In] light of the Supreme Court's decisions 
in eBay . . . a party bringing a claim under the Lanham Act is not 
entitled to a presumption of irreparable harm when seeking a 
preliminary injunction . . . .''); See, e.g., Herb Reed Enters. LLC v. 
Florida Entm't Mgmt., 736 F.3d 1239, 1249 (9th Cir. 2013), cert. 
denied, 135 S. Ct. 57 (2014).
    \46\Rettew Statement, supra note 38, at 13; Brody Statement, supra 
note 38, at 2.
    \47\Herb Reed Enters., LLC v. Florida Entm't Mgmt., Inc., 135 S. 
Ct. 57 (2014) (denying cert); Abraham v. Alpha Chi Omega, 134 S. Ct. 88 
(2013) (denying cert).
---------------------------------------------------------------------------
    The Third, Ninth, and Eleventh Circuits have extended eBay 
to trademark cases and rejected the rebuttable presumption of 
irreparable harm, pointing to the similarities between the 
Lanham Act's and the Patent Act's injunctive relief statutory 
provisions and their premise on the same ``principles of 
equity.''\48\ These courts overlook the differences between 
these areas of intellectual property and base their rationale 
on a broad application of the Supreme Court's statement in eBay 
that ``[equitable] discretion must be exercised consistent with 
traditional principles of equity, in patent disputes no less 
than in other cases governed by such standards.''\49\ Other 
courts, including the Fifth and Eighth Circuits, acknowledge 
the eBay standard but continue to apply the presumption of 
irreparable harm upon a successful showing of liability in 
trademark disputes.\50\ The emerging confusion is further 
evidenced by decisions like those of the Sixth Circuit that 
have applied the principles of eBay while still applying some 
form of the presumption.\51\
---------------------------------------------------------------------------
    \48\Compare 15 U.S.C. Sec.  1116(a) (``The several courts vested 
with jurisdiction of civil actions arising under this chapter shall 
have power to grant injunctions, according to the principles of equity 
and upon such terms as the court may deem reasonable . . . .''), with 
35 U.S.C. Sec.  283 (``The several courts having jurisdiction of cases 
under this title may grant injunctions in accordance with the 
principles of equity to prevent the violation of any right secured by 
patent, on such terms as the court deems reasonable.'').
    \49\eBay, 547 U.S. at 394; see e.g., Ferring, 765 F.3d at 214 (``We 
hold that although eBay in particular arose in the patent context, its 
rationale is equally applicable in other contexts, including cases 
arising under the Lanham Act . . .''); Herb Reed, 736 F.3d at 1249 (The 
[eBay] principle applies to trademark infringement under the Lanham 
Act. Just as `[n]othing in the Patent Act indicates that Congress 
intended such a departure,' so too nothing in the Lanham Act indicates 
that Congress intended a departure for trademark infringement 
cases.''); Commodores Entm't Corp. v. McClary, 648 Fed. Appx. 771, 777 
(11th Cir. 2016) (per curiam) (unpublished) (``In light of the Supreme 
Court's holding in eBay, a presumption of irreparable harm cannot 
survive.'').
    \50\Abraham v. Alpha Chi Omega, 708 F.3d 614, 627 (5th Cir. 2013); 
Phyllis Schlafly Revocable Trust v. Cori, 924 F.3d 1004, 1009 (8th Cir. 
2019) (citing eBay, ``It is unclear whether the traditional presumption 
of irreparable harm in trademark cases has survived more recent Supreme 
Court opinions emphasizing the movant's burden to show that 
`irreparable injury is likely in the absence of an injunction.''') 
(citations omitted).
    \51\Audi AG v. D'Amato, 469 F.3d 534, 550 (6th Cir. 2006) (citing 
the eBay test while holding that ``Audi would be irreparably harmed'' 
by the defendant's trademark infringement).
---------------------------------------------------------------------------
    Since eBay, a number of courts have denied plaintiffs 
injunctive relief despite compelling cases on the merits. For 
example, in Adidas Am., Inc. v. Skechers USA, Inc., the Ninth 
Circuit reversed the district court's preliminary injunction on 
both trademark infringement and dilution claims, 
notwithstanding that the district court found--and the 
appellate court agreed--that plaintiff adidas had shown a 
likelihood of success on the merits, namely that there was both 
customer confusion and harm to its brand.\52\ The dissent 
disputed that there was not sufficient evidence of irreparable 
harm, but also called into question discarding the presumption 
that irreparable harm should flow from the finding of a 
likelihood of success on the merits:
---------------------------------------------------------------------------
    \52\890 F.3d 747, 759 (9th Cir. 2018); see also, e.g., Pom 
Wonderful LLC v. Pur Beverages LLC, No. 2:13-cv-06917, 2015 WL 
10433693, at *18 (C.D. Cal. Aug. 6, 2015) (denying preliminary 
injunction due to failure to show irreparable harm despite likelihood 
of success on its claim).
---------------------------------------------------------------------------
    It is not hard to understand how the presumption arose. If 
a plaintiff can demonstrate a likelihood that it will succeed 
on the merits of its trademark claim--as adidas succeeded in 
establishing that Skechers's Cross Court shoe infringed and 
diluted adidas's famous Three-Stripe mark, a conclusion we 
affirm--it is not a big leap to conclude that adidas would be 
injured by that action.\53\
---------------------------------------------------------------------------
    \53\Adidas, 890 F.3d 747, 762-63.
---------------------------------------------------------------------------
    In Adidas and similar cases, it is unclear what additional 
evidence could or should be provided to establish irreparable 
harm given the evidence of record already demonstrating 
consumer confusion or loss of control over the brand. Thus, 
while the Ninth Circuit, for instance, states that ``[e]vidence 
of loss of control over business reputation and damage to 
goodwill could constitute irreparable harm,''\54\ when 
presented with evidence of actual consumer confusion, a 
district court nonetheless concluded that it ``simply 
underscores customer confusion, not irreparable harm''--
demonstrating an unwillingness to conclude that such confusion 
is the sort of irreparable harm typically addressed by 
equitable relief.\55\ In sum, trademark litigants in courts 
adopting eBay are faced with uncertainty over what constitutes 
sufficient evidence of irreparable injury.
---------------------------------------------------------------------------
    \54\Herb Reed, 736 F.3d at 1250 (emphasis added).
    \55\Id.; Williams v. Green Valley RV, Inc., No. 8:15-cv-01010, 2015 
WL 4694075, at *2 (C.D. Cal. Aug. 6, 2015) (``Plaintiff's evidence of 
irreparable harm is nothing more than a regurgitation of consumer 
confusion evidence . . . . Irreparable harm is no longer presumed or 
proven by a mere showing of consumer confusion.'').
---------------------------------------------------------------------------
    Compounding the evidentiary issue, some courts have 
declined to even assess all the factors relevant to granting an 
injunction if they do not find an initial showing of 
irreparable harm,\56\ which means that in these cases, courts 
may not be fully considering the merits of plaintiffs' 
infringement claims and discounting or ignoring evidence of 
consumer harm or confusion as a result.
---------------------------------------------------------------------------
    \56\Spiraledge v. Seaworld, No. 13-cv-296, 2013 WL 3467435, at *6 
(S.D. Cal. July 9, 2013) (``Because Spiraledge has failed to meet its 
burden of demonstrating that irreparable injury is likely in the 
absence of an injunction, the Court need not decide whether 
[Spiraledge] is likely to succeed on the merits.'') (quotation marks 
omitted); see also Lemley, supra note 40, at 1808.
---------------------------------------------------------------------------
    The inconsistent and unpredictable approaches courts have 
taken in the post-eBay landscape have led to inequitable 
outcomes for trademark owners, created uncertainty, and 
increased the burden on trademark owners who seek injunctive 
relief, making enforcement against infringement a greater and 
more burdensome task.\57\ To rectify this circuit split and 
resulting confusion, H.R. 6196 confirms that the historical 
practice of applying a rebuttable presumption of irreparable 
harm is the appropriate course for claims under the Lanham Act 
(while still requiring plaintiffs to meet the burden of 
production on other elements necessary to establish entitlement 
to an injunction).\58\
---------------------------------------------------------------------------
    \57\See Rettew Statement, supra note 38, at 17.
    \58\The Committee recognizes that there are key differences between 
trademarks and patents, including those discussed in this report. The 
Committee is not, at this time, taking a position with regard to the 
decision in eBay in the patent context.
---------------------------------------------------------------------------

2. Balancing First Amendment concerns

    In providing that a plaintiff is entitled to a rebuttable 
presumption of irreparable harm following a court's finding of 
trademark infringement, or upon a finding of likelihood of 
success on the merits in the case of a motion for preliminary 
injunction or temporary restraining order, the Committee 
acknowledges the need to take special care to ensure that the 
interests protected by the Lanham Act do not encroach on the 
rights to free speech and expression enshrined in the First 
Amendment. Courts have long been appropriately circumspect in 
applying the Lanham Act so as not to interfere with the First 
Amendment rights of creators and distributors of ``artistic 
works'' (sometimes called ``expressive works''), including 
without limitation movies, television programs, songs, books, 
plays, video games, and the like, which may depict or reference 
third-party marks within such artistic works or in such 
artistic works' titles.\59\ It is the intent of the Committee 
that this legislation will not in any way affect that 
jurisprudence.
---------------------------------------------------------------------------
    \59\Courts have extended this principle to advertising and 
promotional activities that use a protected title or term. Twentieth 
Cent. Fox TV a division of Twentieth Cent. Fox Film Corp. v. Empire 
Distrib., Inc., 875 F.3d 1192, 1196-97 (9th Cir. 2017) (``Although it 
is true that these promotional efforts technically fall outside the 
title or body of an expressive work, it requires only a minor logical 
extension of the reasoning of Rogers to hold that works protected under 
its test may be advertised and marketed by name, and we so hold.''); 
Fortres Grand Corp. v. Warner Bros. Ent. Inc., 947 F. Supp. 2d 922, 
933, aff'd on other grounds, 763 F.3d 696 (7th Cir. 2014) (applying 
Rogers to promotional websites for a film as ``creative, fictional 
extensions of the film'').
---------------------------------------------------------------------------
    The standard for accommodating First Amendment interests in 
the Lanham Act context for infringement and unfair competition 
claims was first articulated in Rogers v. Grimaldi,\60\ which 
has been widely adopted by courts across the nation in the 
subsequent three decades. As a threshold matter under the 
Rogers test, a plaintiff cannot state a viable trademark claim 
in the context of an artistic work (1) unless the defendant's 
use of the mark ``has no artistic relevance to the underlying 
work whatsoever,'' or (2) ``if it has some artistic relevance, 
unless the [use of the mark] explicitly misleads as to the 
source or the content of the work.''\61\ The ``no artistic 
relevance . . . whatsoever'' standard sets an extremely low 
bar, requiring only that ``the level of relevance must merely 
be above zero.''\62\ ``This black-and-white rule has the 
benefit of limiting [the court's] need to engage in artistic 
analysis in this context.''\63\ When that bar is met and any 
level of artistic relevance to the underlying work is present, 
the use may be actionable only where the creator explicitly 
misleads consumers. This test appropriately recognizes the 
primacy of constitutional protections for free expression, 
while respecting a trademark owner's right to prevent 
unauthorized use of its mark and the public's interest in 
avoiding confusion.
---------------------------------------------------------------------------
    \60\875 F.2d 994 (2d Cir. 1989).
    \61\Id. at 999.
    \62\E.S.S. Entm't 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 
1095, 1100 (9th Cir. 2020).
    \63\Brown v. Electronic Arts, Inc., 724 F.3d 1235, 1243 (9th Cir. 
2013).
---------------------------------------------------------------------------
    In enacting this legislation, the Committee intends and 
expects that courts will continue to apply the Rogers standard 
to cabin the reach of the Lanham Act in cases involving 
expressive works. The Committee believes that the adoption by a 
court of a test that departs from Rogers, including any that 
might require a court to engage in fact-intensive inquiries and 
pass judgment on a creator's ``artistic motives'' in order to 
evaluate Lanham Act claims in the expressive-works context 
would be contrary to the Congressional understanding of how the 
Lanham Act should properly operate to protect important First 
Amendment considerations, and upon which the Committee is 
relying in clarifying the standard for assessing irreparable 
harm when considering injunctive relief.

    E. CONFIRMING THE AUTHORITY OF THE DIRECTOR OVER TTAB DECISIONS

    The TTAB is an administrative tribunal within the USPTO 
that hears ex parte appeals of final decisions by examining 
attorneys and conducts inter partes trial proceedings.\64\ The 
TTAB is composed of statutory members--the Director, the Deputy 
Director, the Commissioner for Patents, the Commissioner for 
Trademarks--and administrative trademark judges appointed by 
the Secretary of Commerce in consultation with the 
Director.\65\ The USPTO also houses an administrative body that 
handles patent matters, the Patent Trial and Appeal Board 
(PTAB), which is likewise composed of the same statutory 
members, as well as administrative patent judges appointed by 
the Secretary in consultation with the Director.\66\
---------------------------------------------------------------------------
    \64\15 U.S.C. Sec. Sec.  1070, 1067.
    \65\15 U.S.C. Sec.  1067(b).
    \66\35 U.S.C. Sec.  6(a).
---------------------------------------------------------------------------
    A recent decision of the Federal Circuit, Arthrex, Inc. v. 
Smith & Nephew, Inc.,\67\ found that the administrative patent 
judges comprising the PTAB were operating as ``principal 
officers,'' which require Senate confirmation, and were thus 
appointed in violation of the Appointments Clause of the 
Constitution. In Arthrex, the appellant appealed a PTAB inter 
partes review decision, and in doing so contended that the 
administrative patent judges that presided over the proceeding 
were unconstitutionally appointed because they ``were principal 
officers who must be, but were not, appointed by the President 
with the advice and consent of the Senate.''\68\ The court 
concluded that as currently constituted, administrative patent 
judges were principal officers, and that ``[a]s such, they must 
be appointed by the President and confirmed by the Senate; 
because they are not, the current structure of the Board 
violates the Appointments Clause.''\69\ To correct this 
perceived defect, the court stripped PTAB judges of their civil 
service protections.\70\ It also remanded the case, and 
subsequent cases that have raised an Appointments Clause 
challenge, for rehearing by a new PTAB panel. The Supreme Court 
recently granted certiorari in the case.\71\
---------------------------------------------------------------------------
    \67\941 F.3d 1320 (Fed. Cir. 2019).
    \68\Id. at 1327.
    \69\Id. at 1335. As witnesses discussed in a hearing before the 
Subcommittee on Courts, Intellectual Property, and the Internet, there 
are a number of ways to address this apparent defect on the patent 
side. The Patent Trial and Appeal Board and the Appointments Clause: 
Implications of Recent Court Decisions: Hearing Before the Subcomm. on 
Cts., Intell. Prop., and the Internet of the H. Comm. on the Judiciary, 
116th Cong. (2019). It is important that any changes made to the patent 
system reflect the unique practices and needs of that area of 
intellectual property.
    \70\941 F.3d at 1337-38.
    \71\Arthrex, Inc. v. Smith & Nephew, Inc., 19-1458, 2020 WL 
6037208, at *1 (U.S. Oct. 13, 2020).
---------------------------------------------------------------------------
    No similar finding has been made with respect to the TTAB's 
administrative trademark judges, and the issue is being 
actively litigated. Structural differences between the PTAB and 
the TTAB, as well as greater existing statutory authority for 
the Director over the conduct of trademark proceedings, suggest 
that the outcome on the trademark side may well be different. 
Notably, section 18 of the Lanham Act provides that ultimate 
relief in inter partes trademark proceedings rests in the 
Director's discretion:
    In such proceedings the Director may refuse to register the 
opposed mark, may cancel the registration, in whole or in part, 
may modify the application or registration by limiting the 
goods or services specified therein, may otherwise restrict or 
rectify with respect to the register the registration of a 
registered mark, may refuse to register any or all of several 
interfering marks, or may register the mark or marks for the 
person or persons entitled thereto, as the rights of the 
parties under this chapter may be established in the 
proceedings . . . . \72\
---------------------------------------------------------------------------
    \72\15 U.S.C. Sec.  1068.
---------------------------------------------------------------------------
    To clarify the historical understanding of the Director's 
role and preempt additional challenges, H.R. 6196 includes 
language expressly confirming the authority of the Director to 
reconsider TTAB decisions. The purpose of the new language is 
to state even more explicitly the existing authority of the 
Director. Because it is understood that this authority already 
exists in the trademark context, the statutory additions should 
be understood to be confirmatory only.\73\
---------------------------------------------------------------------------
    \73\The Committee has not taken position on whether the Federal 
Circuit's decision in Arthrex was correct or reflects the intent of 
Congress with respect to PTAB. Nor has the committee taken a position 
on whether the authority of the Director with respect to TTAB is or 
should be the same as, or similar to, the Director's authority with 
respect to PTAB.
---------------------------------------------------------------------------

                                Hearings

    The Committee on the Judiciary held no hearings on H.R. 
6196, but the Subcommittee on Courts, Intellectual Property, 
and the Internet held a hearing on July 18, 2019 on 
``Counterfeits and Cluttering: Emerging Threats to the 
Integrity of the Trademark System and the Impact on American 
Consumers and Businesses,'' which helped develop this 
legislation. The Committee also held an oversight hearing with 
the Director of the U.S. Patent and Trademark Office, Andrei 
Iancu, on May 9, 2019, at which issues relevant to this 
legislation were discussed.

                        Committee Consideration

    On September 9, 2020, the Committee met in open session and 
ordered the bill, H.R. 6196, favorably reported as amended, by 
a voice vote, a quorum being present.

                         Vote of the Committee

    In compliance with clause 3(b) of rule XIII of the Rules of 
the House of Representatives, the Committee advises that no 
rollcall votes occurred during the Committee's consideration of 
H.R. 6196.

                      Committee Oversight Findings

    In compliance with clause 3(c)(1) of rule XIII of the Rules 
of the House of Representatives, the Committee advises that the 
findings and recommendations of the Committee, based on 
oversight activities under clause 2(b)(1) of rule X of the 
Rules of the House of Representatives, are incorporated in the 
descriptive portions of this report.

  New Budget Authority and Tax Expenditures and Congressional Budget 
                          Office Cost Estimate

    With respect to the requirements of clause 3(c)(2) of rule 
XIII of the Rules of the House of Representatives and section 
308(a) of the Congressional Budget Act of 1974 and with respect 
to requirements of clause (3)(c)(3) of rule XIII of the Rules 
of the House of Representatives and section 402 of the 
Congressional Budget Act of 1974, the Committee has requested 
but not received a cost estimate for this bill from the 
Director of Congressional Budget Office (CBO). The Committee 
has requested but not received from the Director of the CBO a 
statement as to whether this bill contains any new budget 
authority, spending authority, credit authority, or an increase 
or decrease in revenues or tax expenditures.

                    Duplication of Federal Programs

    No provision of H.R. 6196 establishes or reauthorizes a 
program of the Federal government known to be duplicative of 
another Federal program, a program that was included in any 
report from the Government Accountability Office to Congress 
pursuant to section 21 of Public Law 111-139, or a program 
related to a program identified in the most recent Catalog of 
Federal Domestic Assistance.

                    Performance Goals and Objectives

    Pursuant to clause 3(c)(4) of rule XIII of the Rules of the 
House of Representatives, the Committee states that H.R. 6196 
is designed to update the nation's trademark laws by 
modernizing trademark examination procedures, establishing new, 
more efficient proceedings to clear registrations from the 
trademark register for marks for which proper use in commerce 
was not made, clarifying the standard for injunctive review in 
trademark infringement cases, and confirming the authority of 
the Director of the U.S. Patent and Trademark Office (USPTO) to 
reconsider decisions of the Trademark Trial and Appeal Board 
(TTAB).

                          Advisory on Earmarks

    In accordance with clause 9 of rule XXI of the Rules of the 
House of Representatives, H.R. 6196 does not contain any 
congressional earmarks, limited tax benefits, or limited tariff 
benefits as defined in clause 9(e), 9(f), or 9(g) of rule XXI.

                      Section-by-Section Analysis

    The following discussion describes the bill as reported by 
the Committee:
    Sec. 1. Short title. Section 1 sets forth the short title 
of the bill as the ``Trademark Modernization Act of 2020'' or 
the ``TM Act of 2020.''
    Sec. 2. Definitions. Section 2 provides the following 
definitions:
    (1) Director.--The term ``Director'' means the Under 
Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
    (2) Trademark Act of 1946.--The term ``Trademark Act of 
1946'' means the Act entitled ``An Act to provide for the 
registration and protection of trademarks used in commerce, to 
carry out the provisions of certain international conventions, 
and for other purposes'', approved July 5, 1946, as amended (15 
U.S.C. 1051, et seq.) (commonly referred to as the ``Trademark 
Act of 1946'' or the ``Lanham Act'').
    Sec. 3. Providing for third-party submission of evidence 
during examination. Section 3 amends section 1 of the Lanham 
Act (15 U.S.C. 1051) to codify an existing practice of the 
USPTO to accept evidence offered by third parties during 
examination.
    Subsection (a) adds new subsection (f) to section 1 of the 
Lanham Act. It provides a time-limited process by which a third 
party can submit to the USPTO evidence relevant to the 
examination of a trademark application for consideration in 
deciding whether a trademark registration should issue. 
Evidence can relate to any ground on which an examiner could 
refuse registration, including that the mark has not been used 
in commerce, and as such, does not qualify for registration.
    Subsections (b) and (c) provide a one-year period for 
implementation.
    Sec. 4. Providing for flexible response periods. Section 4 
amends section 12(b) of the Lanham Act (15 U.S.C. 1062(b)) to 
provide the USPTO flexibility in setting times for response to 
office actions issued during examination. Currently, the 
statute requires that the USPTO allow six months to respond. 
The new provision would allow the Office to set response 
periods, by regulation, for a time period between 60 days and 
six months, with the option for an applicant to request 
extensions to a full six-month period.
    Sec. 5. Ex parte expungement; ex parte reexamination; new 
grounds for cancellation. Section 5 adds two new ex parte 
cancellation procedures to the Lanham Act. Current law provides 
that a third party can only request cancellation of a trademark 
registration through an inter partes procedure before the 
Trademark Trial and Appeal Board or in a lawsuit in district 
court. The new procedures provide an expedited process by which 
a third party can request cancellation of a registration when 
the registrant had not used the trademark in commerce as 
required for federal registration.
    Subsection (a). Ex parte expungement. Subsection (a) 
creates a new section 16A of the Lanham Act, which provides 
procedures for ex parte expungement of trademark registrations 
for marks that have never been used in commerce. Because 
federal registration requires a ``mark'' to be used in U.S. 
commerce, the premise of an expungement proceeding is that, if 
the subject of the registration was never used in commerce for 
the particular goods or services identified, the subject 
registration is not actually a ``mark'' within the meaning of 
the Lanham Act.
    New section 16A provides the following filing requirements 
and procedures:
    (a) Petition. A petition can be filed by any person and 
must allege that the mark covered by a registration was never 
used for some or all of the goods or services recited in the 
registration certificate.
    (b) Contents of the petition. The Act details the filing 
requirements for the petition, which include a requirement that 
an investigation be undertaken to determine whether or not the 
mark was ever used.
    (c) Initial determination; institution. The Act provides 
for a final, and non-reviewable institution process before an 
expungement proceeding is instituted. To institute, the 
Director must find that a prima facie case of the mark having 
never been in use in commerce has been demonstrated by the 
petition.
    (d) Ex parte expungement procedures. Generally, the 
procedures will follow the same procedures for initial 
examination. The Act authorizes the Director to establish 
timing specific to the ex parte expungement proceedings, and to 
promulgate rules to mitigate efforts to misuse the procedure to 
harass trademark registrants.
    (e) Registrant's evidence of use. If a proceeding is 
instituted, a registrant must come forward with evidence 
demonstrating, effectively, that it has ever used its mark in 
commerce. For any goods or services for which the registrant 
demonstrates use, the registration will not be cancelled.
    (f) Excusable nonuse. Registrants who filed their 
applications under the benefits of a treaty (sections 44(e) and 
66 of the Lanham Act) can respond to a petition for expungement 
with a showing of excusable nonuse. The circumstances that 
satisfy excusable nonuse are limited and must be due to special 
circumstance beyond the registrant's control (e.g., trade 
embargo, fire or other catastrophe).
    (g) Examiner's decision; order to cancel. The examiner will 
find that a registration should be cancelled if a registrant 
cannot show use of its mark ever, or cannot demonstrate 
excusable nonuse (as applicable). The final order to cancel 
shall not issue until all appeals have been exhausted or the 
time for appeal has expired.
    (h) Ex parte expungement by the Director. The Director, on 
his own initiative, may institute an ex parte expungement 
proceeding. Once instituted, the proceeding procedures are the 
same as those for proceedings instituted by petition.
    (i) Time for institution. A petition can be filed, or a 
proceeding can be instituted by the Director on his own 
initiative, beginning three years after registration through 
ten years after registration.
    (j) Limitation on later expungement proceedings. The Act 
includes a prohibition on two co-pending expungement 
proceedings for the same registration covering the same goods 
and services. Additionally, if an expungement proceeding is 
instituted, but the registrant demonstrates use, no further 
expungement proceedings can be brought against the same 
registration for the same goods or services considered but not 
cancelled.
    (k) Use in commerce showing. The use sufficient to defeat 
an ex parte expungement proceeding can be use any time up until 
the date of the petition or the Director's order to institute 
for Director-ordered proceedings. This temporal showing is 
relevant only for expungement proceedings, and does not 
immunize a registration against other challenges when use was 
not made before registration and such use was required.
    Subsection (b). New grounds for cancellation. Amends 
section 14 of the Lanham Act (15 U.S.C. 1064) to make a mark 
having never been used a ground for cancellation before the 
Trademark Trial and Appeal Board that is available at any time 
after the three-year period following registration.
    Subsection (c). Ex parte reexamination. Creates a new 
section 16B of the Lanham Act, which provides procedures for ex 
parte reexamination of trademark registrations covering marks 
for which improper use claims were made during the examination 
process before registration. Procedurally, ex parte 
reexamination operates nearly identically to ex parte 
expungement. The substantive difference between the two 
proceedings is the time period for relevant use. For ex parte 
reexamination, the registrant must show use during the time 
before the registration issued, with the particulars of timing 
spelled out in the Act.
    New section 16B provides the following filing requirements 
and procedures:
    (a) Petition. A petition can be filed by any person. It 
must allege that the mark was not used on or before the 
relevant date for some or all of the goods or services 
identified in the registration certificate.
    (b) Relevant date. The Act defines the ``relevant date'' to 
mean, with respect to an application for the registration of a 
mark with an initial filing basis of--
    (1) section 1(a) and not amended at any point to be filed 
pursuant to section 1(b), the date on which the application was 
initially filed; or
    (2) section 1(b) or amended at any point to be filed 
pursuant to section 1(b), the date on which--
    (A) an amendment to allege use under section 1(c) was 
filed; or
    (B) the period for filing a statement of use under section 
1(d) expired, including all extensions thereof.
    (c) Contents of the petition. The Act details the filing 
requirements for the petition, which include a requirement that 
an investigation be undertaken to determine whether or not the 
mark was in use on or before the relevant date.
    (d) Initial determination; institution. The Act provides 
for a final, and non-reviewable institution process before an 
ex parte reexamination proceeding is instituted. To institute, 
the Director must find that a prima facie case of the mark 
having not been in use in commerce on or before the relevant 
date has been demonstrated by the petition.
    (e) Ex parte reexamination procedures. Generally, the 
procedures will follow the same procedures for initial 
examination. The Act authorizes the Director to establish 
timing specific to the ex parte reexamination proceedings, and 
to promulgate rules to mitigate efforts to use the procedure to 
harass trademark registrants.
    (f) Registrant's evidence of use. If a proceeding is 
instituted, a registrant must come forward with evidence 
demonstrating that it used its mark in commerce on or before 
the relevant date.
    (g) Examiner's decision; order to cancel. Generally, the 
examiner will find that a registration should be cancelled if a 
registrant cannot show use of its mark on or before the 
relevant date in connection with the goods and/or services 
covered by the institution order. The final order to cancel 
shall not issue until all appeals have been exhausted or the 
time for appeal has expired.
    (h) Reexamination by the Director. The Director, on his own 
initiative, may institute an ex parte reexamination proceeding.
    (i) Time for institution. A petition can be filed, or the 
Director may institute under subsection (h), within the first 
five years after the registration date.
    (j) Limitation on later reexamination proceedings. The Act 
includes a prohibition on two co-pending ex parte reexamination 
proceedings for the same registration covering the same goods 
and services. Additionally, if a reexamination proceeding is 
instituted but the registrant demonstrates use of the mark on 
or before the relevant date, no further reexamination 
proceedings can be brought against the same registration for 
the same goods or services.
    (k) Supplemental register. Ex parte reexamination applies 
to supplemental register registrations. It also makes clear 
that the Act does not affect the timing of cancellation actions 
under section 24 of the Lanham Act.
    Subsection (d). Appeal. A registrant subject to an ex parte 
expungement proceeding or reexamination may appeal the decision 
to the Trademark Trial and Appeal Board and then to the Court 
of Appeals for the Federal Circuit.
    Subsections (e)-(g). Technical and conforming amendments; 
Deadline for procedures; Effective date. These subsections 
provide technical and conforming amendments and a one-year 
post-enactment effective date.
    Sec. 6. Rebuttable presumption of irreparable harm. Section 
6 codifies the rule that a plaintiff seeking an injunction to 
remedy a trademark violation is entitled to a rebuttable 
presumption of irreparable harm.
    Sec. 7. Report on decluttering initiatives. Section 7 
provides for a GAO study and report on efforts to declutter the 
trademark register, including the new procedures provided by 
the Act as well as other efforts undertaken by the USPTO.
    Sec. 8. Amendments to confirm authority of the Director. To 
preempt a potential court challenge and confirm the historical 
understanding and current practice of the Director's authority, 
subsection 8(a) of H.R 6196 amends sections 18, 20, and 24 of 
the Lanham Act\74\ to make explicit that the Director has the 
authority to reconsider, modify, or set aside TTAB decisions.
---------------------------------------------------------------------------
    \74\15 U.S.C. Sec. Sec.  1068, 1070, 1092.
---------------------------------------------------------------------------
    Subsection 8(b) provides two rules of construction that 
cement current practice. The first clarifies that these 
amendments should not to be construed to suggest that the 
Director previously lacked the authority to reconsider, modify, 
or set aside TTAB decisions. The second clarifies that the 
amendments should not be construed to suggest that the Director 
is required to reconsider, modify, or set aside any particular 
TTAB decision. Rather, this provision confirms the Director's 
ability to reconsider a decision sua sponte. The USPTO is not 
expected to promulgate rules that permit third parties to 
request reconsideration under these provisions.

         Changes in Existing Law Made by the Bill, as Reported

  In compliance with clause 3(e) of rule XIII of the Rules of 
the House of Representatives, changes in existing law made by 
the bill, as reported, are shown as follows (existing law 
proposed to be omitted is enclosed in black brackets, new 
matter is printed in italic, and existing law in which no 
change is proposed is shown in roman):

                          ACT OF JULY 5, 1946

  AN ACT To provide for the registration and protection of trademarks 
used in commerce, to carry out the provisions of certain international 
                  conventions, and for other purposes.

                    TITLE I--THE PRINCIPAL REGISTER

  Section 1. (a)(1) The owner of a trademark used in commerce 
may request registration of its trademark on the principal 
register hereby established by paying the prescribed fee and 
filing in the Patent and Trademark Office an application and a 
verified statement, in such form as may be prescribed by the 
Director, and such number of specimens or facsimiles of the 
mark as used as may be required by the Director.
  (2) The application shall include specification of the 
applicant's domicile and citizenship, the date of the 
applicant's first use of the mark, the date of the applicant's 
first use of the mark in commerce, the goods in connection with 
which the mark is used, and a drawing of the mark.
  (3) The statement shall be verified by the applicant and 
specify that--
          (A) the person making the verification believes that 
        he or she, or the juristic person in whose behalf he or 
        she makes the verification, to be the owner of the mark 
        sought to be registered;
          (B) to the best of the verifier's knowledge and 
        belief, the facts recited in the application are 
        accurate;
          (C) the mark is in use in commerce; and
          (D) to the best of the verifier's knowledge and 
        belief, no other person has the right to use such mark 
        in commerce either in the identical form thereof or in 
        such near resemblance thereto as to be likely, when 
        used on or in connection with the goods of such other 
        person, to cause confusion, or to cause mistake, or to 
        deceive, except that, in the case of every application 
        claiming concurrent use, the applicant shall--
                  (i) state exceptions to the claim of 
                exclusive use; and
                  (ii) shall specify, to the extent of the 
                verifier's knowledge--
                          (I) any concurrent use by others;
                          (II) the goods on or in connection 
                        with which and the areas in which each 
                        concurrent use exists;
                          (III) the periods of each use; and
                          (IV) the goods and area for which the 
                        applicant desires registration.
  (4) The applicant shall comply with such rules or regulations 
as may be prescribed by the Director. The Director shall 
promulgate rules prescribing the requirements for the 
application and for obtaining a filing date herein.
  (b)(1) A person who has a bona fide intention, under 
circumstances showing the good faith of such person, to use a 
trademark in commerce may request registration of its trademark 
on the principal register hereby established by paying the 
prescribed fee and filing in the Patent and Trademark Office an 
application and a verified statement, in such form as may be 
prescribed by the Director.
  (2) The application shall include specification of the 
applicant's domicile and citizenship, the goods in connection 
with which the applicant has a bona fide intention to use the 
mark, and a drawing of the mark.
  (3) The statement shall be verified by the applicant and 
specify--
          (A) that the person making the verification believes 
        that he or she, or the juristic person in whose behalf 
        he or she makes the verification, to be entitled to use 
        the mark in commerce;
          (B) the applicant's bona fide intention to use the 
        mark in commerce;
          (C) that, to the best of the verifier's knowledge and 
        belief, the facts recited in the application are 
        accurate; and
          (D) that, to the best of the verifier's knowledge and 
        belief, no other person has the right to use such mark 
        in commerce either in the identical form thereof or in 
        such near resemblance thereto as to be likely, when 
        used on or in connection with the goods of such other 
        person, to cause confusion, or to cause mistake, or to 
        deceive.
Except for applications filed pursuant to section 44, no mark 
shall be registered until the applicant has met the 
requirements of subsections (c) and (d) of this section.
  (4) The applicant shall comply with such rules or regulations 
as may be prescribed by the Director. The Director shall 
promulgate rules prescribing the requirements for the 
application and for obtaining a filing date herein.
  (c) At any time during examination of an application filed 
under subsection (b), an applicant who has made use of the mark 
in commerce may claim the benefits of such use for purposes of 
this Act, by amending his or her application to bring it into 
conformity with the requirements of subsection (a).
  (d)(1) Within six months after the date on which the notice 
of allowance with respect to a mark is issued under section 
13(b)(2) to an applicant under subsection (b) of this section, 
the applicant shall file in the Patent and Trademark Office, 
together with such number of specimens or facsimiles of the 
mark as used in commerce as may be required by the Director and 
payment of the prescribed fee, a verified statement that the 
mark is in use in commerce and specifying the date of the 
applicant's first use of the mark in commerce and those goods 
or services specified in the notice of allowance on or in 
connection with which the mark is used in commerce. Subject to 
examination and acceptance of the statement of use, the mark 
shall be registered in the Patent and Trademark Office, a 
certificate of registration shall be issued for those goods or 
services recited in the statement of use for which the mark is 
entitled to registration, and notice of registration shall be 
published in the Official Gazette of the Patent and Trademark 
Office. Such examination may include an examination of the 
factors set forth in subsections (a) through (e) of section 2. 
The notice of registration shall specify the goods or services 
for which the mark is registered.
  (2) The Director shall extend, for one additional 6-month 
period, the time for filing the statement of use under 
paragraph (1), upon written request of the applicant before the 
expiration of the 6-month period provided in paragraph (1). In 
addition to an extension under the preceding sentence, the 
Director may, upon a showing of good cause by the applicant, 
further extend the time for filing the statement of use under 
paragraph (1) for periods aggregating not more than 24 months, 
pursuant to written request of the applicant made before the 
expiration of the last extension granted under this paragraph. 
Any request for an extension under this paragraph shall be 
accompanied by a verified statement that the applicant has a 
continued bona fide intention to use the mark in commerce and 
specifying those goods or services identified in the notice of 
allowance on or in connection with which the applicant has a 
continued bona fide intention to use the mark in commerce. Any 
request for an extension under this paragraph shall be 
accompanied by payment of the prescribed fee. The Director 
shall issue regulations setting forth guidelines for 
determining what constitutes good cause for purposes of this 
paragraph.
  (3) The Director shall notify any applicant who files a 
statement of use of the acceptance or refusal thereof and, if 
the statement of use is refused, the reasons for the refusal. 
An applicant may amend the statement of use.
  (4) The failure to timely file a verified statement of use 
under paragraph (1) or an extension request under paragraph (2) 
shall result in abandonment of the application, unless it can 
be shown to the satisfaction of the Director that the delay in 
responding was unintentional, in which case the time for filing 
may be extended, but for a period not to exceed the period 
specified in paragraphs (1) and (2) for filing a statement of 
use.
  (e) If the applicant is not domiciled in the United States 
the applicant may designate, by a document filed in the United 
States Patent and Trademark Office, the name and address of a 
person resident in the United States on whom may be served 
notices or process in proceedings affecting the mark. Such 
notices or process may be served upon the person so designated 
by leaving with that person or mailing to that person a copy 
thereof at the address specified in the last designation so 
filed. If the person so designated cannot be found at the 
address given in the last designation, or if the registrant 
does not designate by a document filed in the United States 
Patent and Trademark Office the name and address of a person 
resident in the United States on whom may be served notices or 
process in proceedings affecting the mark, such notices or 
process may be served on the Director.
  (f) A third party may submit for consideration for inclusion 
in the record of an application evidence relevant to a ground 
for refusal of registration. The third-party submission shall 
identify the ground for refusal and include a concise 
description of each piece of evidence submitted in support of 
each identified ground for refusal. Within two months after the 
date on which the submission is filed, the Director shall 
determine whether the evidence should be included in the record 
of the application. The Director shall establish by regulation 
appropriate procedures for the consideration of evidence 
submitted by a third party under this subsection and may 
prescribe a fee to accompany the submission. If the Director 
determines that the third-party evidence should be included in 
the record of the application, only the evidence and the ground 
for refusal to which the evidence relates may be so included. 
Any determination by the Director whether or not to include 
evidence in the record of an application shall be final and 
non-reviewable, and a determination to include or to not 
include evidence in the record shall not prejudice any party's 
right to raise any issue and rely on any evidence in any other 
proceeding.

           *       *       *       *       *       *       *


                              publication

  Sec. 12. (a) Upon the filing of an application for 
registration and payment of the prescribed fee, the Director 
shall refer the application to the examiner in charge of the 
registration of marks, who shall cause an examination to be 
made and, if on such examination it shall appear that the 
applicant is entitled to registration, or would be entitled to 
registration upon the acceptance of the statement of use 
required by section 1(d) of this Act, the Director shall cause 
the mark to be published in the Official Gazette of the Patent 
and Trademark Office: Provided, That in the case of an 
applicant claiming concurrent use, or in the case of an 
application to be placed in an interference as provided for in 
section 16 of this Act, the mark, if otherwise registrable, may 
be published subject to the determination of the rights of the 
parties to such proceedings.
  [(b) If the applicant is found not entitled to registration, 
the examiner shall advise the applicant thereof and of the 
reasons therefor. The applicant shall have a period of six 
months in which to reply or amend his application, which shall 
then be reexamined. This procedure may be repeated until (1) 
the examiner finally refuses registration of the mark or (2) 
the applicant fails for a period of six months to reply or 
amend or appeal, whereupon the application shall be deemed to 
have been abandoned, unless it can be shown to the satisfaction 
of the Director that the delay in responding was unintentional, 
whereupon such time may be extended.]
  (b)(1) If the applicant is found not entitled to 
registration, the examiner shall notify the applicant thereof 
and of the reasons therefor. The applicant may reply or amend 
the application, which shall then be reexamined. This procedure 
may be repeated until the examiner finally refuses registration 
of the mark or the application is abandoned as described in 
paragraph (2).
  (2) After notification under paragraph (1), the applicant 
shall have a period of six months in which to reply or amend 
the application, or such shorter time that is not less than 
sixty days, as prescribed by the Director by regulation. If the 
applicant fails to reply or amend or appeal within the relevant 
time period, including any extension under paragraph (3), the 
application shall be deemed to have been abandoned, unless it 
can be shown to the satisfaction of the Director that the delay 
in responding was unintentional, in which case the application 
may be revived and such time may be extended. The Director may 
prescribe a fee to accompany any request to revive.
  (3) The Director shall provide, by regulation, for extensions 
of time to respond to the examiner for any time period under 
paragraph (2) that is less than six months. The Director must 
allow the applicant to obtain extensions of time to reply or 
amend aggregating six months from the date of notification 
under paragraph (1) when the applicant so requests. However, 
the Director may set by regulation the time for individual 
periods of extension, and prescribe a fee, by regulation, for 
any extension request. Any request for extension must be filed 
on or before the date on which a reply or amendment is due 
under paragraph (1).
  (c) A registrant of a mark registered under the provisions of 
the Act of March 3, 1881, or the Act of February 20, 1905, may, 
at any time prior to the expiration of the registration 
thereof, upon the payment of the prescribed fee file with the 
Director an affidavit setting forth those goods stated in the 
registration on which said mark is in use in commerce and that 
the registrant claims the benefits of this Act for said mark. 
The Director shall publish notice thereof with a reproduction 
of said mark in the Official Gazette, and notify the registrant 
of such publication and of the requirement for the affidavit of 
use or nonuse as provided for in subsection (b) of section 8 of 
this Act. Marks published under this subsection shall not be 
subject to the provisions of section 13 of this Act.

           *       *       *       *       *       *       *

  Sec. 14. A petition to cancel a registration of a mark, 
stating the grounds relied upon, may, upon payment of the 
prescribed fee, be filed as follows by any person who believes 
that he is or will be damaged, including as a result of a 
likelihood of dilution by blurring or dilution by tarnishment 
under section 43(c), by the registration of a mark on the 
principal register established by this Act, or under the Act of 
March 3, 1881, or the Act of February 20, 1905:
          (1) Within five years from the date of the 
        registration of the mark under this Act.
          (2) Within five years from the date of publication 
        under section 12(c) hereof of a mark registered under 
        the Act of March 3, 1881, or the Act of February 20, 
        1905.
          (3) At any time if the registered mark becomes the 
        generic name for the goods or services, or a portion 
        thereof, for which it is registered, or is functional, 
        or has been abandoned, or its registration was obtained 
        fraudulently or contrary to the provisions of section 4 
        or of subsection (a), (b), or (c) of section 2 for a 
        registration under this Act, or contrary to similar 
        prohibitory provisions of such prior Acts for a 
        registration under such Acts, or if the registered mark 
        is being used by, or with the permission of, the 
        registrant so as to misrepresent the source of the 
        goods or services on or in connection with which the 
        mark is used. If the registered mark becomes the 
        generic name for less than all of the goods or services 
        for which it is registered, a petition to cancel the 
        registration for only those goods or services may be 
        filed. A registered mark shall not be deemed to be the 
        generic name of goods or services solely because such 
        mark is also used as a name of or to identify a unique 
        product or service. The primary significance of the 
        registered mark to the relevant public rather than 
        purchaser motivation shall be the test for determining 
        whether the registered mark has become the generic name 
        of goods or services on or in connection with which it 
        has been used.
          (4) At any time if the mark is registered under the 
        Act of March 3, 1881, or the Act of February 20, 1905, 
        and has not been published under the provisions of 
        subsection (c) of section 12 of this Act.
          (5) At any time in the case of a certification mark 
        on the ground that the registrant (A) does not control, 
        or is not able legitimately to exercise control over, 
        the use of such mark, or (B) engages in the production 
        or marketing of any goods or services to which the 
        certification mark is applied, or (C) permits the use 
        of the certification mark for purposes other than to 
        certify or (D) discriminately refuses to certify or to 
        continue to certify the goods or services of any person 
        who maintains the standards or conditions which such 
        mark certifies[:].
          (6) At any time after the three-year period following 
        the date of registration, if the registered mark has 
        never been used in commerce on or in connection with 
        some or all of the goods or services recited in the 
        registration:
 Provided, That the Federal Trade Commission may apply to 
cancel on the grounds specified in paragraphs (3) and (5) of 
this section any mark registered on the principal register 
established by this Act, and the prescribed fee shall not be 
required. Nothing in paragraph (5) shall be deemed to prohibit 
the registrant from using its certification mark in advertising 
or promoting recognition of the certification program or of the 
goods or services meeting the certification standards of the 
registrant. Such uses of the certification mark shall not be 
grounds for cancellation under paragraph (5), so long as the 
registrant does not itself produce, manufacture, or sell any of 
the certified goods or services to which its identical 
certification mark is applied. Nothing in paragraph (6) shall 
be construed to limit the timing applicable to any other ground 
for cancellation. A registration under sections 44(e) or 66 
shall not be cancelled pursuant to paragraph (6) if the 
registrant demonstrates that any nonuse is due to special 
circumstances that excuse such nonuse.
  Sec. 15. Except on a ground for which application to cancel 
may be filed at any time under [paragraphs (3) and (5)] 
paragraphs (3), (5) and (6) of section 14 of this Act, and 
except to the extent, if any, to which the use of a mark 
registered on the principal register infringes a valid right 
acquired under the law of any State or Territory by use of a 
mark or trade name continuing from a date prior to the date of 
registration under this Act of such registered mark, the right 
of the owner to use such registered mark in commerce for the 
goods or services on or in connection with which such 
registered mark has been in continuous use for five consecutive 
years subsequent to the date of such registration and is still 
in use in commerce, shall be incontestable: Provided, That--
          (1) there has been no final decision adverse to the 
        owner's claim of ownership of such mark for such goods 
        or services, or to the owner's right to register the 
        same or to keep the same on the register; and
          (2) there is no proceeding involving said rights 
        pending in the United States Patent and Trademark 
        Office or in a court and not finally disposed of; and
          (3) an affidavit is filed with the Director within 
        one year after the expiration of any such five-year 
        period setting forth those goods or services stated in 
        the registration on or in connection with which such 
        mark has been in continuous use for such five 
        consecutive years and is still in use in commerce, and 
        the other matters specified in paragraphs (1) and (2) 
        of this section; and
          (4) no incontestable right shall be acquired in a 
        mark which is the generic name for the goods or 
        services or a portion thereof, for which it is 
        registered.
  Subject to the conditions above specified in this section, 
the incontestable right with reference to a mark registered 
under this Act shall apply to a mark registered under the Act 
of March 3, 1881, or the Act of February 20, 1905, upon the 
filing of the required affidavit with the Director within one 
year after the expiration of any period of five consecutive 
years after the date of publication of a mark under the 
provisions of subsection (c) of section 12 of this Act.
  The Director shall notify any registrant who files the above-
prescribed affidavit of the filing thereof.

           *       *       *       *       *       *       *


SEC. 16A. EX PARTE EXPUNGEMENT.

  (a) Petition.--Notwithstanding sections 7(b) and 22, and 
subsections (a) and (b) of section 33, any person may file a 
petition to expunge a registration of a mark on the basis that 
the mark has never been used in commerce on or in connection 
with some or all of the goods or services recited in the 
registration.
  (b) Contents of Petition.--The petition, together with any 
supporting documents, shall--
          (1) identify the registration that is the subject of 
        the petition;
          (2) identify each good or service recited in the 
        registration for which it is alleged that the mark has 
        never been used in commerce;
          (3) include a verified statement that sets forth the 
        elements of the reasonable investigation the petitioner 
        conducted to determine that the mark has never been 
        used in commerce on or in connection with the goods and 
        services identified in the petition, and any additional 
        facts that support the allegation that the mark has 
        never been used in commerce on or in connection with 
        the identified goods and services;
          (4) include any supporting evidence on which the 
        petitioner relies; and
          (5) be accompanied by the fee prescribed by the 
        Director.
  (c) Initial Determination; Institution.--
          (1) Prima facie case determination, institution, and 
        notification.--The Director shall, for each good or 
        service identified under subsection (b)(2), determine 
        whether the petition sets forth a prima facie case of 
        the mark having never been used in commerce on or in 
        connection with each such good or service, institute an 
        ex parte expungement proceeding for each good or 
        service for which the Director determines that a prima 
        facie case has been set forth, and provide a notice to 
        the registrant and petitioner of the determination of 
        whether or not the proceeding was instituted. Such 
        notice should include a copy of the petition and any 
        supporting documents and evidence that were included 
        with the petition.
          (2) Reasonable investigation guidance.--The Director 
        shall promulgate regulations regarding what constitutes 
        a reasonable investigation under subsection (b)(3) and 
        the general types of evidence that could support a 
        prima facie case that a mark has never been used in 
        commerce, but the Director shall retain the discretion 
        to determine whether a prima facie case is set out in a 
        particular proceeding.
          (3) Determination by director.--Any determination by 
        the Director whether or not to institute a proceeding 
        under this section shall be final and non-reviewable, 
        and shall not prejudice any party's right to raise any 
        issue and rely on any evidence in any other proceeding, 
        except as provided by subsection (j).
  (d) Ex Parte Expungement Procedures.--The procedures for ex 
parte expungement shall be the same as those for examination 
under section 12(b), except that the Director shall promulgate 
regulations establishing and governing a proceeding under this 
section, which may include regulations that set response and 
extension times particular to this type of proceeding, which, 
notwithstanding section 12(b)(3) need not be extendable to six 
months, set limits governing the timing and number of petitions 
filed for a particular registration or by a particular 
petitioner or real parties in interest, and defining the 
relation of a proceeding under this section to other 
proceedings concerning the mark.
  (e) Registrant's Evidence of Use.--A registrant's documentary 
evidence of use must be consistent with when ``a mark shall be 
deemed to be in use in commerce'' as defined in section 45, but 
shall not be limited in form to that of specimens as provided 
in section 1(a).
  (f) Excusable Nonuse.--During an ex parte expungement 
proceeding, for a mark registered under section 44(e) or an 
extension of protection under section 66, the registrant may 
offer evidence showing that any nonuse is due to special 
circumstances that excuse such nonuse. In such a case, the 
examiner shall determine whether the facts and evidence 
demonstrate excusable nonuse and shall not find that the 
registration should be cancelled under subsection (g) for any 
good or service for which excusable nonuse is demonstrated.
  (g) Examiner's Decision; Order to Cancel.--For each good or 
service for which it is determined that a mark has never been 
used in commerce, and for which the provisions of subsection 
(f) do not apply, the examiner shall find that the registration 
should be cancelled for each such good or service. A mark may 
not be found to have never been used in commerce if there is 
evidence of use in commerce by the registrant that temporally 
would have supported registration at the time the application 
was filed or the relevant allegation of use was made, or after 
registration, but before the petition to expunge was filed 
under subsection (a), or an ex parte expungement proceeding was 
instituted by the Director under subsection (h). Unless 
overturned on review of the examiner's decision, the Director 
shall issue an order cancelling the registration, in whole or 
in part, after the time for appeal has expired or any appeal 
proceeding has terminated.
  (h) Ex Parte Expungement by the Director.--
          (1) In general.--The Director may, on the Director's 
        own initiative, institute an ex parte expungement 
        proceeding if the Director discovers information that 
        supports a prima facie case of a mark having never been 
        used in commerce on or in connection with any good or 
        service covered by a registration. The Director shall 
        promptly notify the registrant of such determination, 
        at which time the ex parte expungement proceeding shall 
        proceed according to the same procedures for ex parte 
        expungement established pursuant to subsection (d). If 
        the Director determines, based on the Director's own 
        initiative, to institute an expungement proceeding, the 
        Director shall transmit or make available the 
        information that formed the basis for that 
        determination as part of the institution notice sent to 
        the registrant.
          (2) Rule of construction.--Nothing in this subsection 
        may be construed to limit any other authority of the 
        Director.
  (i) Time for Institution.--
          (1) When petition may be filed, ex parte expungement 
        proceeding instituted.--A petition for ex parte 
        expungement of a registration under subsection (a) may 
        be filed, or the Director may institute on the 
        Director's own initiative an ex parte expungement 
        proceeding of a registration under subsection (h), at 
        any time following the expiration of three years after 
        the date of registration and before the expiration of 
        ten years following the date of registration.
          (2) Exception.--Notwithstanding paragraph (1), for a 
        period of three years after the date of enactment of 
        this Act, a petition for expungement of a registration 
        under subsection (a) may be filed, or the Director may 
        institute on the Director's own initiative an ex parte 
        expungement proceeding of a registration under 
        subsection (h), at any time following the expiration of 
        three years after the date of registration.
  (j) Limitation on Later Ex Parte Expungement Proceedings.--
          (1) No co-pending proceedings.--With respect to a 
        particular registration, while an ex parte expungement 
        proceeding is pending, no later ex parte expungement 
        proceeding can be instituted with respect to the same 
        goods or services that are the subject of a pending ex 
        parte expungement proceeding.
          (2) Estoppel.--With respect to a particular 
        registration, for goods or services previously subject 
        to an instituted expungement proceeding for which, in 
        that proceeding, it was determined that the registrant 
        had used the mark for particular goods or services, as 
        relevant, and the registration was not cancelled as to 
        those goods or services, no further ex parte 
        expungement proceedings may be initiated as to those 
        goods or services, regardless of the identity of the 
        petitioner.
  (k) Use in Commerce Requirement Not Altered.--Nothing in this 
section shall affect the requirement for use in commerce of a 
mark registered under section 1(a) or section 23.

SEC. 16B. EX PARTE REEXAMINATION.

  (a) Petition for Reexamination.--Any person may file a 
petition to reexamine a registration of a mark on the basis 
that the mark was not in use in commerce on or in connection 
with some or all of the goods or services recited in the 
registration on or before the relevant date.
  (b) Relevant Date.--In this section, the term ``relevant 
date'' means, with respect to an application for the 
registration of a mark with an initial filing basis of--
          (1) section 1(a) and not amended at any point to be 
        filed pursuant to section 1(b), the date on which the 
        application was initially filed; or
          (2) section 1(b) or amended at any point to be filed 
        pursuant to section 1(b), the date on which--
                  (A) an amendment to allege use under section 
                1(c) was filed; or
                  (B) the period for filing a statement of use 
                under section 1(d) expired, including all 
                approved extensions thereof.
  (c) Requirements for the Petition.--The petition, together 
with any supporting documents, shall--
          (1) identify the registration that is the subject of 
        the petition;
          (2) identify each good and service recited in the 
        registration for which it is alleged that the mark was 
        not in use in commerce on or in connection with on or 
        before the relevant date;
          (3) include a verified statement that sets forth the 
        elements of the reasonable investigation the petitioner 
        conducted to determine that the mark was not in use in 
        commerce on or in connection with the goods and 
        services identified in the petition on or before the 
        relevant date, and any additional facts that support 
        the allegation that the mark was not in use in commerce 
        on or before the relevant date on or in connection with 
        the identified goods and services;
          (4) include supporting evidence on which the 
        petitioner relies; and
          (5) be accompanied by the fee prescribed by the 
        Director.
  (d) Initial Determination; Institution.--
          (1) Prima facie case determination, institution, and 
        notification.--The Director shall, for each good or 
        service identified under subsection (c)(2), determine 
        whether the petition sets forth a prima facie case of 
        the mark having not been in use in commerce on or in 
        connection with each such good or service, institute an 
        ex parte reexamination proceeding for each good or 
        service for which the Director determines that the 
        prima facie case has been set forth, and provide a 
        notice to the registrant and petitioner of the 
        determination of whether or not the proceeding was 
        instituted. Such notice should include a copy of the 
        petition and any supporting documents and evidence that 
        were included with the petition.
          (2) Reasonable investigation guidance.--The Director 
        shall promulgate regulations regarding what constitutes 
        a reasonable investigation under subsection (c)(3) and 
        the general types of evidence that could support a 
        prima facie case that the mark was not in use in 
        commerce on or in connection with a good or service on 
        or before the relevant date, but the Director shall 
        retain discretion to determine whether a prima facie 
        case is set out in a particular proceeding.
          (3) Determination by director.--Any determination by 
        the Director whether or not to institute a 
        reexamination proceeding under this section shall be 
        final and non-reviewable, and shall not prejudice any 
        party's right to raise any issue and rely on any 
        evidence in any other proceeding, except as provided by 
        subsection (j).
  (e) Reexamination Procedures.--The procedures for 
reexamination shall be the same as those established under 
section 12(b) except that the Director shall promulgate 
regulations establishing and governing a proceeding under this 
section, which may include regulations that set response and 
extension times particular to this type of proceeding, which, 
notwithstanding section 12(b)(3) need not be extendable to six 
months; set limits governing the timing and number of petitions 
filed for a particular registration or by a particular 
petitioner or real parties in interest; and define the relation 
of a reexamination proceeding under this section to other 
proceedings concerning the mark.
  (f) Registrant's Evidence of Use.--A registrant's documentary 
evidence of use must be consistent with when ``a mark shall be 
deemed to be in use in commerce'' as defined in section 45, but 
shall not be limited in form to that of specimens as provided 
in section 1(a).
  (g) Examiner's Decision; Order to Cancel.--For each good or 
service for which it is determined that the registration should 
not have issued because the mark was not in use in commerce on 
or before the relevant date, the examiner shall find that the 
registration should be cancelled for each such good or service. 
Unless overturned on review of the examiner's decision, the 
Director shall issue an order cancelling the registration, in 
whole or in part, after the time for appeal has expired or any 
appeal proceeding has terminated.
  (h) Reexamination by Director.--
          (1) In general.--The Director may, on the Director's 
        own initiative, institute an ex parte reexamination 
        proceeding if the Director discovers information that 
        supports a prima facie case of the mark having not been 
        used in commerce on or in connection with some or all 
        of the goods or services covered by the registration on 
        or before the relevant date. The Director shall 
        promptly notify the registrant of such determination, 
        at which time reexamination shall proceed according to 
        the same procedures established pursuant to subsection 
        (e). If the Director determines, based on the 
        Director's own initiative, to institute an ex parte 
        reexamination proceeding, the Director shall transmit 
        or make available the information that formed the basis 
        for that determination as part of the institution 
        notice.
          (2) Rule of construction.--Nothing in this subsection 
        may be construed to limit any other authority of the 
        Director.
  (i) Time for Institution.--A petition for ex parte 
reexamination may be filed, or the Director may institute on 
the Director's own initiative an ex parte reexamination 
proceeding, at any time not later than five years after the 
date of registration of a mark registered based on use in 
commerce.
  (j) Limitation on Later Ex Parte Reexamination Proceedings.--
          (1) No co-pending proceedings.--With respect to a 
        particular registration, while an ex parte 
        reexamination proceeding is pending, no later ex parte 
        reexamination proceeding can be instituted with respect 
        to the same goods or services that are the subject of a 
        pending ex parte reexamination proceeding.
          (2) Estoppel.--With respect to a particular 
        registration, for any goods or services previously 
        subject to an instituted ex parte reexamination 
        proceeding for which, in that proceeding, it was 
        determined that the registrant had used the mark for 
        particular goods or services before the relevant date, 
        and the registration was not cancelled as to those 
        goods or services, no further ex parte reexamination 
        proceedings may be initiated as to those goods or 
        services, regardless of the identity of the petitioner.
  (k) Supplemental Register.--The provisions of subsection (b) 
apply, as appropriate, to registrations under section 23. 
Nothing in this section shall be construed to limit the timing 
of a cancellation action under section 24 of the Act.

           *       *       *       *       *       *       *

  Sec. 18. In such proceedings the Director may refuse to 
register the opposed mark, may cancel the registration, in 
whole or in part, may modify the application or registration by 
limiting the goods or services specified therein, may otherwise 
restrict or rectify with respect to the register the 
registration of a registered mark, may refuse to register any 
or all of several interfering marks, or may register the mark 
or marks for the person or persons entitled thereto, as the 
rights of the parties hereunder may be established in the 
proceedings. The authority of the Director under this section 
includes the authority to reconsider, and modify or set aside, 
a decision of the Trademark Trial and Appeal Board; Provided, 
That in the case of the registration of any mark based on 
concurrent use, the Director shall determine and fix the 
conditions and limitations provided for in subsection (d) of 
section 2 of this Act. However, no final judgment shall be 
entered in favor of an applicant under section 1(b) before the 
mark is registered, if such applicant cannot prevail without 
establishing constructive use pursuant to section 7(c).

           *       *       *       *       *       *       *

  Sec. 20. An appeal may be taken to the Trademark Trial and 
Appeal Board from any final decision of the examiner in charge 
of the registration of marks or a final decision by an examiner 
in an ex parte expungement proceeding or ex parte reexamination 
proceeding upon the payment of the prescribed fee. The Director 
may reconsider, and modify or set aside, a decision of the 
Trademark Trial and Appeal Board under this section.
  Sec. 21. (a)(1) An applicant for registration of a mark, 
party to an interference proceeding, party to an opposition 
proceeding, party to an application to register as a lawful 
concurrent user, party to a cancellation proceeding, a 
registrant who has filed an affidavit as provided in section 8 
or section 71, [or an applicant for renewal] an applicant for 
renewal, or a registrant subject to an ex parte expungement 
proceeding or an ex parte reexamination proceeding, who is 
dissatisfied with the decision of the Director or Trademark 
Trial and Appeal Board, may appeal to the United States Court 
of Appeals for the Federal Circuit thereby waiving his right to 
proceed under subsection (b) of this section: Provided, That 
such appeal shall be dismissed if any adverse party to the 
proceeding, other than the Director, shall, within twenty days 
after the appellant has filed notice of appeal according to 
paragraph (2) of this subsection, files notice with the 
Director that he elects to have all further proceedings 
conducted as provided in subsection (b) of this section. 
Thereupon the appellant shall have thirty days thereafter 
within which to file a civil action under subsection (b) of 
this section, in default of which the decision appealed from 
shall govern the further proceedings in the case.
  (2) When an appeal is taken to the United States Court of 
Appeals for the Federal Circuit, the appellant shall file in 
the United States Patent and Trademark Office a written notice 
of appeal directed to the Director, within such time after the 
date of the decision from which the appeal is taken as the 
Director prescribes, but in no case less than 60 days after 
that date.
  (3) The Director shall transmit to the United States Court of 
Appeals for the Federal Circuit a certified list of the 
documents comprising the record in the United States Patent and 
Trademark Office. The court may request that the Director 
forward the original or certified copies of such documents 
during pendency of the appeal. In an ex parte case, the 
Director shall submit to that court a brief explaining the 
grounds for the decision of the United States Patent and 
Trademark Office, addressing all the issues involved in the 
appeal. The court shall, before hearing an appeal give notice 
of the time and place of the hearing to the Director and the 
parties in the appeal.
  (4) The United States Court of Appeals for the Federal 
Circuit shall review the decision from which the appeal is 
taken on the record before the United States Patent and 
Trademark Office. Upon its determination the court shall issue 
its mandate and opinion to the Director, which shall be entered 
of record in the United States Patent and Trademark Office and 
shall govern the further proceedings in the case. However, no 
final judgment shall be entered in favor of an applicant under 
section 1(b) before the mark is registered, if such applicant 
cannot prevail without establishing constructive use pursuant 
to section 7(c).
  (b)(1) Whenever a person authorized by subsection (a) of this 
section to appeal to the United States Court of Appeals for the 
Federal Circuit except for a registrant subject to an ex parte 
expungement proceeding or an ex parte reexamination proceeding 
is dissatisfied with the decision of the Director or Trademark 
Trial and Appeal Board, said person may, unless appeal has been 
taken to said United States Court of Appeals for the Federal 
Circuit, have remedy by a civil action if commenced within such 
time after such decision, not less than sixty days, as the 
Director appoints or as provided in subsection (a) of this 
section. The court may adjudge that an applicant is entitled to 
a registration upon the application involved, that a 
registration involved should be canceled, or such other matter 
as the issues in the proceeding require, as the facts in the 
case may appear. Such adjudication shall authorize the Director 
to take any necessary action, upon compliance with the 
requirements of law. However, no final judgment shall be 
entered in favor of an applicant under section 1(b) before the 
mark is registered, if such applicant cannot prevail without 
establishing constructive use pursuant to section 7(c).
  (2) The Director shall not be made a party to an inter partes 
proceeding under this subsection, but he shall be notified of 
the filing of the complaint by the clerk of the court in which 
it is filed and shall have the right to intervene in the 
action.
  (3) In any case where there is no adverse party, a copy of 
the complaint shall be served on the Director, and, unless the 
court finds the expenses to be unreasonable, all the expenses 
of the proceeding shall be paid by the party bringing the case, 
whether the final decision is in favor of such party or not. In 
suits brought hereunder, the record in the United States Patent 
and Trademark Office shall be admitted on motion of any party, 
upon such terms and conditions as to costs, expenses, and the 
further cross-examination of the witnesses as the court 
imposes, without prejudice to the right of any party to take 
further testimony. The testimony and exhibits of the record in 
the United States Patent and Trademark Office, when admitted, 
shall have the same effect as if originally taken and produced 
in the suit.
  (4) Where there is an adverse party, such suit may be 
instituted against the party in interest as shown by the 
records of the United States Patent and Trademark Office at the 
time of the decision complained of, but any party in interest 
may become a party to the action. If there are adverse parties 
residing in a plurality of districts not embraced within the 
same State, or an adverse party residing in a foreign country, 
the United States District Court for the Eastern District of 
Virginia shall have jurisdiction and may issue summons against 
the adverse parties directed to the marshal of any district in 
which any adverse party resides. Summons against adverse 
parties residing in foreign countries may be served by 
publication or otherwise as the court directs.

           *       *       *       *       *       *       *


TITLE II--THE SUPPLEMENTAL REGISTER

           *       *       *       *       *       *       *


                              cancelation

  Sec. 24. Marks for the supplemental register shall not be 
published for or be subject to opposition, but shall be 
published on registration in the Official Gazette of the Patent 
and Trademark Office. Whenever any person believes that such 
person is or will be damaged by the registration of a mark on 
the supplemental register--
          (1) for which the effective filing date is after the 
        date on which such person's mark became famous and 
        which would be likely to cause dilution by blurring or 
        dilution by tarnishment under section 43(c); or
          (2) on grounds other than dilution by blurring or 
        dilution by tarnishment, such person may at any time, 
        upon payment of the prescribed fee and the filing of a 
        petition stating the ground therefor, apply to the 
        Director to cancel such registration.
The Director shall refer such application to the Trademark 
Trial and Appeal Board, which shall give notice thereof to the 
registrant. If it is found after a hearing before the Board 
which that the registrant is not entitled to registration, or 
that the mark has been abandoned, the registration shall be 
canceled by the Director, unless the Director reconsiders the 
decision of the Board, and modifies or sets aside, such 
decision. However, no final judgment shall be entered in favor 
of an applicant under section (1)(b) before the mark is 
registered, if such applicant cannot prevail without 
establishing constructive use pursuant to section 7(c).

           *       *       *       *       *       *       *


                           general provisions

  Sec. 26. The provisions of this Act shall govern so far as 
applicable applications for registration and registrations on 
the supplemental register as well as those on the principal 
register, but applications for and registrations on the 
supplemental register shall not be subject to or receive the 
advantages of sections 1(b), 2(e), 2(f), 7(b), 7(c), 12(a), 13 
to 18, inclusive, 22, 33, and 42 of this Act. Registrations on 
the supplemental register are subject to ex parte expungement 
and ex parte reexamination under sections 16A and 16B, 
respectively.

           *       *       *       *       *       *       *


TITLE VI--REMEDIES

           *       *       *       *       *       *       *


  Sec. 34. (a) The several courts vested with jurisdiction of 
civil actions arising under this Act shall have power to grant 
injunctions, according to the principles of equity and upon 
such terms as the court may deem reasonable, to prevent the 
violation of any right of the registrant of a mark registered 
in the Patent and Trademark Office or to prevent a violation 
under subsection (a), (c), or (d) of section 43. A plaintiff 
seeking any such injunction shall be entitled to a rebuttable 
presumption of irreparable harm upon a finding of a violation 
identified in this subsection in the case of a motion for a 
permanent injunction or upon a finding of likelihood of success 
on the merits for a violation identified in this subsection in 
the case of a motion for a preliminary injunction or temporary 
restraining order. Any such injunction may include a provision 
directing the defendant to file with the court and serve on the 
plaintiff within thirty days after the service on the defendant 
of such injunction, or such extended period as the court may 
direct, a report in writing under oath setting forth in detail 
the manner and form in which the defendant has complied with 
the injunction. Any such injunction granted upon hearing, after 
notice to the defendant, by any district court of the United 
States, may be served on the parties against whom such 
injunction is granted anywhere in the United States where they 
may be found, and shall be operative and may be enforced by 
proceedings to punish for contempt, or otherwise, by the court 
by which such injunction was granted, or by any other United 
States district court in whose jurisdiction the defendant may 
be found.
  (b) The said courts shall have jurisdiction to enforce said 
injunction, as herein provided, as fully as if the injunction 
had been granted by the district court in which it is sought to 
be enforced. The clerk of the court or judge granting the 
injunction shall, when required to do so by the court before 
which application to enforce said injunction is made, transfer 
without delay to said court a certified copy of all papers on 
file in his office upon which said injunction was granted.
  (c) It shall be the duty of the clerks of such courts within 
one month after the filing of any action, suit, or proceeding 
involving a mark registered under the provisions of this Act to 
give notice thereof in writing to the Director setting forth in 
order so far as known the names and addresses of the litigants 
and the designating number or numbers of the registration or 
registrations upon which the action, suit, or proceeding has 
been brought, and in the event any other registration be 
subsequently included in the action, suit, or proceeding by 
amendment, answer, or other pleading, the clerk shall give like 
notice thereof to the Director, and within one month after the 
judgment is entered or an appeal is taken the clerk of the 
court shall give notice thereof to the Director, and it shall 
be the duty of the Director on receipt of such notice forthwith 
to endorse the same upon the file wrapper of the said 
registration or registrations and to incorporate the same as a 
part of the contents of said file wrapper.
  (d)(1)(A) In the case of a civil action arising under section 
32(1)(a) of this Act (15 U.S.C. 1114) or section 220506 of 
title 36, United States Code, with respect to a violation that 
consists of using a counterfeit mark in connection with the 
sale, offering for sale, or distribution of goods or services, 
the court may, upon ex parte application, grant an order under 
subsection (a) of this section pursuant to this subsection 
providing for the seizure of goods and counterfeit marks 
involved in such violation and the means of making such marks, 
and records documenting the manufacture, sale, or receipt of 
things involved in such violation.
  (B) As used in this subsection the term ``counterfeit mark'' 
means--
          (i) a counterfeit of a mark that is registered on the 
        principal register in the United States Patent and 
        Trademark Office for such goods or services sold, 
        offered for sale, or distributed and that is in use, 
        whether or not the person against whom relief is sought 
        knew such mark was so registered; or
          (ii) a spurious designation that is identical with, 
        or substantially indistinguishable from, a designation 
        as to which the remedies of this Act are made available 
        by reason of section 220506 of title 36, United States 
        Code;
but such term does not include any mark or designation used on 
or in connection with goods or services of which the 
manufacture or producer was, at the time of the manufacture or 
production in question authorized to use the mark or 
designation for the type of goods or services so manufactured 
or produced, by the holder of the right to use such mark or 
designation.
  (2) The court shall not receive an application under this 
subsection unless the applicant has given such notice of the 
application as is reasonable under the circumstances to the 
United States attorney for the judicial district in which such 
order is sought. Such attorney may participate in the 
proceedings arising under such application if such proceedings 
may affect evidence of an offense against the United States. 
The court may deny such application if the court determines 
that the public interest in a potential prosecution so 
requires.
  (3) The application for an order under this subsection 
shall--
          (A) be based on an affidavit or the verified 
        complaint establishing facts sufficient to support the 
        findings of fact and conclusions of law required for 
        such order; and
          (B) contain the additional information required by 
        paragraph (5) of this subsection to be set forth in 
        such order.
  (4) The court shall not grant such an application unless--
          (A) the person obtaining an order under this 
        subsection provides the security determined adequate by 
        the court for the payment of such damages as any person 
        may be entitled to recover as a result of a wrongful 
        seizure or wrongful attempted seizure under this 
        subsection; and
          (B) the court finds that it clearly appears from 
        specific facts that--
                  (i) an order other than an ex parte seizure 
                order is not adequate to achieve the purposes 
                of section 32 of this Act (15 U.S.C. 1114);
                  (ii) the applicant has not publicized the 
                requested seizure;
                  (iii) the applicant is likely to succeed in 
                showing that the person against whom seizure 
                would be ordered used a counterfeit mark in 
                connection with the sale, offering for sale, or 
                distribution of goods or services;
                  (iv) an immediate and irreparable injury will 
                occur if such seizure is not ordered;
                  (v) the matter to the seized will be located 
                at the place identified in the application;
                  (vi) the harm to the applicant of denying the 
                application outweighs the harm to the 
                legitimate interests of the person against whom 
                seizure would be ordered of granting the 
                application; and
                  (vii) the person against whom seizure would 
                be ordered, or persons acting in concert with 
                such person, would destroy, move, hide, or 
                otherwise make such matter inaccessible to the 
                court, if the applicant were to proceed on 
                notice to such person.
  (5) An order under this subsection shall set forth--
          (A) the findings of fact and conclusions of law 
        required for the order;
          (B) a particular description of the matter to be 
        seized, and a description of each place at which such 
        matter is to be seized;
          (C) the time period, which shall end not later than 
        seven days after the date on which such order is 
        issued, during which the seizure is to be made;
          (D) the amount of security required to be provided 
        under this subsection; and
          (E) a date for the hearing required under paragraph 
        (10) of this subsection.
  (6) The court shall take appropriate action to protect the 
person against whom an order under this subsection is directed 
from publicity, by or at the behest of the plaintiff, about 
such order and any seizure under such order.
          (7) Any materials seized under this subsection shall 
        be taken into the custody of the court. For seizures 
        made under this section, the court shall enter an 
        appropriate protective order with respect to discovery 
        and use of any records or information that has been 
        seized. The protective order shall provide for 
        appropriate procedures to ensure that confidential, 
        private, proprietary, or privileged information 
        contained in such records is not improperly disclosed 
        or used.
  (8) An order under this subsection, together with the 
supporting documents, shall be sealed until the person against 
whom the order is directed has an opportunity to contest such 
order, except that any person against whom such order is issued 
shall have access to such order and supporting documents after 
the seizure has been carried out.
  (9) The court shall order that service of a copy of the order 
under this subsection shall be made by a Federal law 
enforcement officer (such as a United States marshal or an 
officer or agent of the United States Customs Service, Secret 
Service, Federal Bureau of Investigation, or Post Office) or 
may be made by a State or local law enforcement officer, who, 
upon making service, shall carry out the seizure under the 
order. The court shall issue orders, when appropriate, to 
protect the defendant from undue damage from the disclosure of 
trade secrets or other confidential information during the 
course of the seizure, including, when appropriate, orders 
restricting the access of the applicant (or any agent or 
employee of the applicant) to such secrets or information.
  (10)(A) The court shall hold a hearing, unless waived by all 
the parties, on the date set by the court in the order of 
seizure. That date shall be not sooner than ten days after the 
order is issued and not later than fifteen days after the order 
is issued, unless the applicant for the order shows good cause 
for another date or unless the party against whom such order is 
directed consents to another date for such hearing. At such 
hearing the party obtaining the order shall have the burden to 
prove that the facts supporting findings of fact and 
conclusions of law necessary to support such order are still in 
effect. If that party fails to meet that burden, the seizure 
order shall be dissolved or modified appropriately.
  (B) In connection with a hearing under this paragraph, the 
court may make such orders modifying the time limits for 
discovery under the Rules of Civil Procedure as may be 
necessary to prevent the frustration of the purposes of such 
hearing.
  (11) A person who suffers damage by reason of a wrongful 
seizure under this subsection has a cause of action against the 
applicant for the order under which such seizure was made, and 
shall be entitled to recover such relief as may be appropriate, 
including damages for lost profits, cost of materials, loss of 
good will, and punitive damages in instances where the seizure 
was sought in bad faith, and, unless the court finds 
extenuating circumstances, to recover a reasonable attorney's 
fee. The court in its discretion may award prejudgment interest 
on relief recovered under this paragraph, at an annual interest 
rate established under section 6621(a)(2) of the Internal 
Revenue Code of 1986, commencing on the date of service of the 
claimant's pleadings setting forth the claim under this 
paragraph and ending on the date such recovery is granted, or 
for such shorter time as the court deems appropriate.

           *       *       *       *       *       *       *