[Congressional Bills 116th Congress]
[From the U.S. Government Publishing Office]
[H.R. 6196 Reported in House (RH)]

<DOC>





                                                 Union Calendar No. 530
116th CONGRESS
  2d Session
                                H. R. 6196

                          [Report No. 116-645]

     To amend the Trademark Act of 1946 to provide for third-party 
    submission of evidence relating to a trademark application, to 
establish expungement and ex parte proceedings relating to the validity 
of marks, to provide for a rebuttal presumption of irreparable harm in 
              certain proceedings, and for other purposes.


_______________________________________________________________________


                    IN THE HOUSE OF REPRESENTATIVES

                             March 11, 2020

   Mr. Johnson of Georgia (for himself, Mr. Collins of Georgia, Mr. 
    Nadler, and Mrs. Roby) introduced the following bill; which was 
               referred to the Committee on the Judiciary

                           December 14, 2020

 Additional sponsors: Mr. Cicilline, Mr. Reschenthaler, Mr. Cline, Mr. 
                  Deutch, Mr. Stanton, and Mr. Jacobs

                           December 14, 2020

Reported with amendments, committed to the Committee of the Whole House 
          on the State of the Union, and ordered to be printed
 [Strike out all after the enacting clause and insert the part printed 
                               in italic]
 [For text of introduced bill, see copy of bill as introduced on March 
                               11, 2020]


_______________________________________________________________________

                                 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. 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.''.
                                                 Union Calendar No. 530

116th CONGRESS

  2d Session

                               H. R. 6196

                          [Report No. 116-645]

_______________________________________________________________________

                                 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.

_______________________________________________________________________

                           December 14, 2020

Reported with amendments, committed to the Committee of the Whole House 
          on the State of the Union, and ordered to be printed