Trademark Modernization Act of 2020 or the TM Act of 2020
This bill makes several changes to trademark law, such as by providing new mechanisms for opposing and canceling trademark registrations at the Patent and Trademark Office (PTO) and by making it easier to secure an injunction.
The bill authorizes a third party to submit evidence to the PTO to oppose an application for a federal trademark registration.
The bill establishes a procedure for any party to petition the PTO to expunge a registration for a trademark that has not been used in commerce. The bill also establishes a procedure for any party to petition the PTO to reexamine any trademark registration on such nonuse grounds.
The PTO may also initiate such an expungement or reexamination proceeding.
If a plaintiff has prevailed in court in asserting certain trademark rights, that plaintiff shall be entitled to a presumption that the plaintiff will suffer irreparable harm for purposes of determining whether the plaintiff is entitled to a permanent injunction. If a trademark plaintiff is seeking a preliminary injunction, that plaintiff is entitled to this presumption upon a court finding that the plaintiff is likely to succeed on the merits of the case. Under current law, a plaintiff must establish irreparable harm to secure an injunction.
In addition, the PTO Director shall have the authority to reconsider, modify, or set aside certain decisions made by the Trademark Trial and Appeal Board.
The Government Accountability Office shall report to Congress on PTO efforts to address false and inaccurate claims in trademark registrations and applications.
[Congressional Bills 116th Congress]
[From the U.S. Government Publishing Office]
[H.R. 6196 Introduced in House (IH)]
<DOC>
116th CONGRESS
2d Session
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.
_______________________________________________________________________
IN THE HOUSE OF REPRESENTATIVES
March 11, 2020
Mr. Johnson of Georgia (for himself, Mr. Collins of Georgia, Mr.
Nadler, and Mrs. Roby) introduced the following bill; which was
referred to the Committee on the Judiciary
_______________________________________________________________________
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 rebuttal presumption of irreparable harm in
certain proceedings, and for other purposes.
Be it enacted by the Senate and House of Representatives of the
United States of America in Congress assembled,
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. Expungement; Ex parte reexamination.
Sec. 6. Rebuttable presumption of irreparable harm.
Sec. 7. Report on decluttering initiatives.
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 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. EXPUNGEMENT; EX PARTE REEXAMINATION.
(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 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 each registration at issue;
``(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, institution, and notification.--The
Director shall 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 good or service identified in the
petition, institute the ex parte expungement proceeding for
each good or service for which the Director determines that the
prima facie case has been set forth, and notify the registrant
and petitioner of the determination of whether to institute the
proceeding. If the Director determines that an expungement
proceeding should be instituted based on a petition, the
Director shall transmit or make available that petition and any
supporting evidence from the petitioner to the registrant as
part of the institution notice.
``(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 constitute a sufficient
showing of a mark having never been used in commerce under
subsection (b)(4), but the Director shall retain discretion to
determine whether a prima facie case is set out in a particular
case.
``(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.
``(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 setting response and extension times particular to this
proceeding, which, notwithstanding section 12(b)(3) need not be
extendable to six months, setting 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 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 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 was never in use 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 never have been
in use 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 is
filed or the Director, on his own initiative, institutes an expungement
proceeding in accordance with 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 sets forth a prima facie
case of a mark having never been used in commerce on or in
connection with any good or service covered by the
registration. The Director shall promptly notify the registrant
of such determination, at which time the expungement proceeding
shall proceed according to the same procedures for 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.--A petition for ex parte expungement
may be filed, or the Director may institute on his own initiative an ex
parte expungement proceeding, 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 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 each registration at issue;
``(2) identify each good and service recited in the
registration for which it is alleged that the mark was not used
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 used 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, institution, and notification.--The
Director shall determine whether the petition sets forth a
prima facie case of the mark having not been used in commerce
on or in connection with each good or service identified in the
petition on or before the relevant date, institute the
reexamination proceeding for each good or service for which the
Director determines the prima facie case has been set forth,
and notify the registrant and the petitioner of the
determination whether or not to institute the proceeding. If
the Director determines that an ex parte reexamination
proceeding should be instituted based on a petition, the
Director shall transmit or make available that petition and any
supporting evidence from the petitioner to the registrant as
part of the institution notice.
``(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 constitute a sufficient
showing that the mark was not in use in commerce 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
case.
``(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.
``(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 setting response and
extension times particular to this proceeding, which, notwithstanding
section 12(b)(3) need not be extendable to six months, setting 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 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 sets forth 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 his 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 from any order to cancel a registration, in
whole or in part, arising from 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
order to cancel arising from an expungement or 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 after ``authorized by subsection (a) of this
section'' the following: ``, other than a registrant
subject to an expungement proceeding or ex parte
reexamination''.
(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 (b).
(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 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. The study shall cover the period
from 18 months after the date of enactment of this Act to 30 months
after the date of enactment of this Act.
(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 that relate to proceedings that were not
instituted, or were instituted and have reached their
conclusion;
(B) the number of completed proceedings instituted
under each such section, including any proceedings
instituted by the Director's own initiative;
(C) 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;
(D) the number of appeals of decisions of examiners
for each such proceeding; and
(E) 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
which registrations 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 benefit 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 use claims in
trademark registrations; and
(B) any additional programs conducted by the
Director designed to address inaccurate and false
claims use claims 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 for any changes to
laws and regulations that will improve the integrity of the
trademark register to reduce inaccurate and false claims of use
based on the results of such study.
<all>
Introduced in House
Introduced in House
Referred to the House Committee on the Judiciary.
Committee Consideration and Mark-up Session Held.
Ordered to be Reported (Amended).
Reported (Amended) by the Committee on Judiciary. H. Rept. 116-645.
Reported (Amended) by the Committee on Judiciary. H. Rept. 116-645.
Placed on the Union Calendar, Calendar No. 530.
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