15 U.S.C. § 1066a — Ex parte expungement

Page 1295 TITLE 15—COMMERCE AND TRADE § 1066a EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of Title 35, Patents. EFFECTIVE DATE OF 1988 AMENDMENT Amendment by Pub. L. 100–667 effective one year after Nov. 16, 1988, see section 136 of Pub. L. 100–667, set out as a note under section 1051 of this title. EFFECTIVE DATE OF 1982 AMENDMENT Amendment by Pub. L. 97–247 effective six months after Aug. 27, 1982, see section 17(c) of Pub. L. 97–247, set out as a note under section 294 of Title 35, Patents. EFFECTIVE DATE OF 1975 AMENDMENT Amendment by Pub. L. 93–596 effective Jan. 2, 1975, see section 4 of Pub. L. 93–596, set out as a note under section 1111 of this title. REPEAL AND EFFECT ON EXISTING RIGHTS Repeal of inconsistent provisions, effect of this chap- ter on pending proceedings and existing registrations and rights under prior acts, see notes set out under sec- tion 1051 of this title. Executive Documents TRANSFER OF FUNCTIONS For transfer of functions of other officers, employees, and agencies of Department of Commerce, with certain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, §§ 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appen- dix to Title 5, Government Organization and Employ- ees. § 1066. Interference; declaration by Director Upon petition showing extraordinary cir- cumstances, the Director may declare that an interference exists when application is made for the registration of a mark which so resembles a mark previously registered by another, or for the registration of which another has previously made application, as to be likely when used on or in connection with the goods or services of the applicant to cause confusion or mistake or to deceive. No interference shall be declared be- tween an application and the registration of a mark the right to the use of which has become incontestable. (July 5, 1946, ch. 540, title I, § 16, 60 Stat. 434; Pub. L. 87–772, § 11, Oct. 9, 1962, 76 Stat. 771; Pub. L. 97–247, § 11, Aug. 27, 1982, 96 Stat. 321; Pub. L. 100–667, title I, § 117, Nov. 16, 1988, 102 Stat. 3941; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4732(b)(1)(B)], Nov. 29, 1999, 113 Stat. 1536, 1501A–583.) Editorial Notes PRIOR PROVISIONS Act Feb. 20, 1905, ch. 592, § 7, 33 Stat. 726. AMENDMENTS 1999—Pub. L. 106–113 substituted ‘‘Director’’ for ‘‘Commissioner’’. 1988—Pub. L. 100–667 substituted ‘‘used on or in con- nection with the goods or services’’ for ‘‘applied to the goods or when used in connection with the services’’. 1982—Pub. L. 97–247 substituted ‘‘Upon petition show- ing extraordinary circumstances, the Commissioner may declare that an interference exists when applica- tion is made for the registration of a mark which so re- sembles a mark previously registered by another, or for the registration of which another has previously made application, as to be likely when applied to the goods or when used in connection with the services of the ap- plicant to cause confusion or mistake or to deceive’’ for ‘‘Whenever application is made for the registration of a mark which so resembles a mark previously reg- istered by another, or for the registration of which an- other has previously made application, as to be likely when applied to the goods or when used in connection with the services of the applicant to cause confusion or mistake or to deceive, the Commissioner may declare that an interference exists’’. 1962—Pub. L. 87–772 struck out ‘‘purchasers’’ after ‘‘or to deceive’’. Statutory Notes and Related Subsidiaries EFFECTIVE DATE OF 1999 AMENDMENT Amendment by Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of Title 35, Patents. EFFECTIVE DATE OF 1988 AMENDMENT Amendment by Pub. L. 100–667 effective one year after Nov. 16, 1988, see section 136 of Pub. L. 100–667, set out as a note under section 1051 of this title. EFFECTIVE DATE OF 1982 AMENDMENT Amendment by Pub. L. 97–247 effective six months after Aug. 27, 1982, see section 17(c) of Pub. L. 97–247, set out as a note under section 294 of Title 35, Patents. REPEAL AND EFFECT ON EXISTING RIGHTS Repeal of inconsistent provisions, effect of this chap- ter on pending proceedings and existing registrations and rights under prior acts, see notes set out under sec- tion 1051 of this title. Executive Documents TRANSFER OF FUNCTIONS For transfer of functions of other officers, employees, and agencies of Department of Commerce, with certain exceptions, to Secretary of Commerce, with power to delegate, see Reorg. Plan No. 5 of 1950, §§ 1, 2, eff. May 24, 1950, 15 F.R. 3174, 64 Stat. 1263, set out in the Appen- dix to Title 5, Government Organization and Employ- ees. § 1066a. Ex parte expungement (a) Petition Notwithstanding sections 1057(b) and 1072 of this title, and subsections (a) and (b) of section 1115 of this title, 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 sub- ject 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 inves- tigation the petitioner conducted to deter- Page 1296 TITLE 15—COMMERCE AND TRADE § 1066a mine 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 serv- ice for which the Director determines that a prima facie case has been set forth, and pro- vide 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 sup- porting documents and evidence that were in- cluded with the petition. (2) Reasonable investigation guidance The Director shall promulgate regulations regarding what constitutes a reasonable inves- tigation under subsection (b)(3) and the gen- eral types of evidence that could support a prima facie case that a mark has never been used in commerce, but the Director shall re- tain the discretion to determine whether a prima facie case is set out in a particular pro- ceeding. (3) Determination by Director Any determination by the Director whether or not to institute a proceeding under this sec- tion 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 sub- section (j). (d) Ex parte expungement procedures The procedures for ex parte expungement shall be the same as the procedures for examination under section 1062(b) of this title, except that the Director shall promulgate regulations estab- lishing and governing a proceeding under this section, which may include regulations that— (1) set response and extension times par- ticular to this type of proceeding, which, not- withstanding section 1062(b)(3) of this title, need not be extendable to 6 months; (2) set limits governing the timing and num- ber of petitions filed for a particular registra- tion or by a particular petitioner or real par- ties 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 defi- nition of ‘‘use in commerce’’ in section 1127 of this title, but shall not be limited in form to that of specimens as provided in section 1051(a) of this title. (f) Excusable nonuse During an ex parte expungement proceeding, for a mark registered under section 1126(e) of this title or an extension of protection under section 1141f of this title, 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 ex- cusable nonuse and shall not find that the reg- istration 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 deter- mined that a mark has never been used in com- merce, and for which the provisions of sub- section (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 reg- istrant 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 over- turned on review of the examiner’s decision, the Director shall issue an order cancelling the reg- istration, 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 ini- tiative, institute an ex parte expungement proceeding if the Director discovers informa- tion that supports a prima facie case of a mark having never been used in commerce on or in connection with any good or service cov- ered by a registration. The Director shall promptly notify the registrant of such deter- mination, at which time the ex parte expungement proceeding shall proceed accord- ing to the same procedures for ex parte expungement established pursuant to sub- section (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 con- strued to limit any other authority of the Di- rector. (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, Page 1297 TITLE 15—COMMERCE AND TRADE § 1066b or the Director may institute on the Direc- tor’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 December 27, 2020, a petition for expungement of a registration under sub- section (a) may be filed, or the Director may institute on the Director’s own initiative an ex parte expungement proceeding of a reg- istration under subsection (h), at any time fol- lowing 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 pro- ceeding 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 in- stituted 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 reg- istration 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 re- quirement for use in commerce of a mark reg- istered under section 1051(a) or 1091 of this title. (July 5, 1946, ch. 540, title I, § 16A, as added Pub. L. 116–260, div. Q, title II, § 225(a), Dec. 27, 2020, 134 Stat. 2202.) Statutory Notes and Related Subsidiaries EFFECTIVE DATE Section effective upon the expiration of the 1-year pe- riod beginning on Dec. 27, 2020, and applicable to any mark registered before, on, or after that effective date, see section 225(g) of div. Q of Pub. L. 116–260, set out as an Effective Date of 2020 Amendment note under sec- tion 1064 of this title. REGULATIONS Pub. L. 116–260, div. Q, title II, § 225(f), Dec. 27, 2020, 134 Stat. 2207, provided that: ‘‘Not later than 1 year after the date of enactment of this Act [Dec. 27, 2020], the Director shall issue regulations to carry out sec- tions 16A and 16B of the Trademark Act of 1946 [15 U.S.C. 1066a, 1066b], as added by subsections (a) and (c).’’ [For definitions of terms used in section 225(f) of Pub. L. 116–260, set out above, see section 222 of Pub. L. 116–260, set out as a note under section 1051 of this title.] § 1066b. 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 con- nection with some or all of the goods or services recited in the registration on or before the rel- evant 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 1051(a) of this title and not amended at any point to be filed pursuant to section 1051(b) of this title, the date on which the application was initially filed; or (2) section 1051(b) of this title or amended at any point to be filed pursuant to section 1051(b) of this title, the date on which— (A) an amendment to allege use under sec- tion 1051(c) of this title was filed; or (B) the period for filing a statement of use under section 1051(d) of this title expired, in- cluding 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 sub- ject 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 inves- tigation the petitioner conducted to deter- mine that the mark was not in use in com- merce 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 reexam- ination proceeding for each good or service for which the Director determines that the prima facie case has been set forth, and provide a no- tice to the registrant and petitioner of the de- termination of whether or not the proceeding was instituted. Such notice shall include a