H.R. 6196 — what changed

changed “(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.”

“16A. Ex parte expungement

changed “(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—

changed “(1) identify each the registration at issue;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

changed “(1) Prima facie case, case determination, institution, and notification—The Director shall 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 identified in the petition, service, institute the an ex parte expungement proceeding for each good or service for which the Director determines that the a prima facie case has been set forth, and notify provide a notice to the registrant and petitioner of the determination of whether to institute the proceeding. If or not the Director determines that an ex­punge­ment proceeding was instituted. Such notice should be instituted based on include a petition, copy of the Director shall transmit or make available that petition and any supporting documents and evidence from the petitioner to the registrant as part of that were included with the institution notice.petition.

changed “(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 support a sufficient showing of prima facie case that a mark having has never been used in commerce under subsection (b)(4), commerce, but the Director shall retain the discretion to determine whether a prima facie case is set out in a particular case.proceeding.

changed “(3) Determination by Director—Any 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.proceeding, except as provided by subsection (j).

changed “(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 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, setting 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).

changed “(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.

changed “(g) Examiner’s decision; order To to cancel—For each good or service for which it is determined that a mark was has never in use 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 never have never been in use 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 is was filed under subsection (a), or the Director, on his own initiative, institutes an ex parte expungement proceeding in accordance with 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

changed “(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 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 the 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.

changed “(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.institution

added “(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.

added “(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.”

“(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:”

“16B. Ex parte reexamination

changed “(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.

changed “(b) Relevant date—In this section, the term “relevant date” 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—

changed “(1) identify each the registration at issue;that is the subject of the petition;

changed “(2) identify each good and service recited in the registration for which it is alleged that the mark was not used in use in commerce on or in connection with on or before the relevant date;

changed “(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 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

changed “(1) Prima facie case, case determination, institution, and notification—The Director shall 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 used in use in commerce on or in connection with each such good or service identified in the petition on or before the relevant date, service, institute the 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 notify provide a notice to the registrant and the petitioner of the determination of whether or not to institute the proceeding. If the Director determines that an ex parte reexamination proceeding was instituted. Such notice should be instituted based on include a petition, copy of the Director shall transmit or make available that petition and any supporting documents and evidence from the petitioner to the registrant as part of that were included with the institution notice.petition.

changed “(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 support a sufficient showing 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 case.proceeding.

changed “(3) Determination by director—Any 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.proceeding, except as provided by subsection (j).

changed “(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 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, setting 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, interest; and defining 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).

changed “(g) Examiner’s decision; order To 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

changed “(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 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.

changed “(i) Time for institution—A petition for ex parte reexamination may be filed, or the Director may institute on his 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.”