Sec. 225. EX PARTE EXPUNGEMENT; EX PARTE REEXAMINATION; NEW GROUNDS FOR CANCELLATION

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## SEC. 225 EX PARTE EXPUNGEMENT; EX PARTE REEXAMINATION; NEW GROUNDS FOR CANCELLATION ###

(a)Ex Parte Expungement The Trademark Act of 1946 is amended by inserting after section 16 (15 U.S.C. 1066) the following: > > ## “SEC. 16A EX PARTE EXPUNGEMENT > > **[**[15 U.S.C. 1066a](/us/usc/t15/s1066a)**]** > > > ### “(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 > > A petition filed under subsection (a), 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— > > > ##### “(A) > > 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 > > > ##### “(B) > > 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 shall 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 in subsection (j). > > > ### “(d) Ex Parte Expungement Procedures > > The procedures for ex parte expungement shall be the same as the procedures 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— > > > #### “(1) > > set response and extension times particular to this type of proceeding, which, notwithstanding section 12(b)(3), need not be extendable to 6 months; > > > #### “(2) > > 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 > > > #### “(3) > > define 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 shall be consistent with when a mark shall be deemed to be in use in commerce under the definition of ‘use in commerce’ 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 shall 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 shall 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 3 years after the date of registration and before the expiration of 10 years following the date of registration. > > > #### “(2) Exception > > Notwithstanding paragraph (1), for a period of 3 years after the date of enactment of this section, 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 3 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 may 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 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 inserting after paragraph

(5)the following: > > #### “(6) > > At any time after the 3-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 text following paragraph (6), as added by paragraph

(2)of this subsection, by inserting “Nothing in paragraph

(6)shall be construed to limit the timing applicable to any other ground for cancellation. A registration under section 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 is amended by inserting after section 16A, as added by subsection (a), the following: > > ## “SEC. 16B EX PARTE REEXAMINATION > > **[**[15 U.S.C. 1066b](/us/usc/t15/s1066b)**]** > > > ### “(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 > > A petition filed under subsection (a), 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— > > > ##### “(A) > > 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 > > > ##### “(B) > > 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 shall 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 in subsection (j). > > > ### “(e) Reexamination Procedures > > The procedures for reexamination shall be the same as the procedures 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— > > > #### “(1) > > set response and extension times particular to this type of proceeding, which, notwithstanding section 12(b)(3), need not be extendable to 6 months; > > > #### “(2) > > 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 > > > #### “(3) > > 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 shall be consistent with when a mark shall be deemed to be in use in commerce under the definition of ‘use in commerce’ 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 shall 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 5 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 may 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.” > . ###

(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 is amended— ####

(1)in section 15 (15 U.S.C. 1065), by striking “paragraphs

(3)and (5)” and inserting “paragraphs (3), (5), and (6)”; and ####

(2)in section 26 (15 U.S.C. 1094), by adding at the end the following: “Registrations on the supplemental register shall be subject to ex parte expungement and ex parte reexamination under sections 16A and 16B, respectively.”. ###

(f)Deadline for Procedures **[**[15 U.S.C. 1066a note](/us/usc/t15/s1066a)**]** Not later than 1 year after the date of 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 **[**[15 U.S.C. 1064 note](/us/usc/t15/s1064)**]** The amendments made by this section shall take effect upon the expiration of the 1-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. 225

EX PARTE EXPUNGEMENT; EX PARTE REEXAMINATION; NEW GROUNDS FOR CANCELLATION

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