Sec. 5. Expungement; Ex parte reexamination
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The Trademark Act of 1946 ( 15 U.S.C. 1066 ) is amended by inserting after section 16, the following new section: 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. The petition, together with any supporting documents, shall— identify each registration at issue; identify each good or service recited in the registration for which it is alleged that the mark has never been used in commerce; 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; include any supporting evidence on which the petitioner relies; and be accompanied by the fee prescribed by the Director. 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. 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. 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. 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. 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). 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. 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. 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. Nothing in this subsection may be construed to limit any other authority of the Director. 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. 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. 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. Nothing in this section shall affect the requirement for use in commerce of a mark registered under section 1(a) or section 23. . Section 14 of the Trademark Act of 1946 ( 15 U.S.C. 1064 ) is amended— by striking the colon at the end of paragraph
(5)and inserting a period; by adding after paragraph
(5)the following: 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 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. . 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: 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. 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— 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 section 1(b) or amended at any point to be filed pursuant to section 1(b), the date on which— an amendment to allege use under section 1(c) was filed; or the period for filing a statement of use under section 1(d) expired, including all approved extensions thereof. The petition, together with any supporting documents, shall— identify each registration at issue; 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; 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; include supporting evidence on which the petitioner relies; and be accompanied by the fee prescribed by the Director. 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. 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. 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. 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. 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). 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. 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. Nothing in this subsection may be construed to limit any other authority of the Director. 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. 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. 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. 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. . 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 . 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 . 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 . The Trademark Act of 1946 ( 15 U.S.C. 1051 et seq.) is amended— in section 15 by striking paragraphs
(3)and
(5)and inserting paragraphs (3),
(5)and
(6); and 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. . 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). 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.
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Sec. 5
Expungement; Ex parte reexamination
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