15 U.S.C. § 1066b — Ex parte reexamination

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 Page 1298 TITLE 15—COMMERCE AND TRADE § 1066b copy of the petition and any supporting docu- ments and evidence that were included with the petition. (2) Reasonable investigation guidance The Director shall promulgate regulations regarding what constitutes a reasonable inves- tigation under subsection (c)(3) and the gen- eral 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 deter- mine 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-re- viewable, and shall not prejudice any party’s right to raise any issue and rely on any evi- dence in any other proceeding, except as pro- vided in subsection (j). (e) Reexamination procedures The procedures for reexamination shall be the same as the procedures established under sec- tion 1062(b) of this title 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 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 reexamination proceeding under this section to other pro- ceedings 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 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. (g) Examiner’s decision; order to cancel For each good or service for which it is deter- mined that the registration should not have issued because the mark was not in use in com- merce on or before the relevant date, the exam- iner 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 ini- tiative, institute an ex parte reexamination proceeding if the Director discovers informa- tion 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 be- fore the relevant date. The Director shall promptly notify the registrant of such deter- mination, at which time reexamination shall proceed according to the same procedures es- tablished pursuant to subsection (e). If the Di- rector determines, based on the Director’s own initiative, to institute an ex parte reexamina- tion 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 con- strued to limit any other authority of the Di- rector. (i) Time for institution A petition for ex parte reexamination may be filed, or the Director may institute on the Di- rector’s own initiative an ex parte reexamina- tion 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 pro- ceeding 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 deter- mined that the registrant had used the mark for particular goods or services before the rel- evant date, and the registration was not can- celled as to those goods or services, no further ex parte reexamination proceedings may be initiated as to those goods or services, regard- less of the identity of the petitioner. (k) Supplemental register The provisions of subsection (b) apply, as ap- propriate, to registrations under section 1091 of this title. Nothing in this section shall be con- strued to limit the timing of a cancellation ac- tion under section 1092 of this title. (July 5, 1946, ch. 540, title I, § 16B, as added Pub. L. 116–260, div. Q, title II, § 225(c), Dec. 27, 2020, 134 Stat. 2205.) 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 Director required to issue regulations to carry out this section no later than 1 year after Dec. 27, 2020, see Page 1299 TITLE 15—COMMERCE AND TRADE § 1067 1 So in original. Probably should be preceded by ‘‘the’’. 2 So in original. Probably should be followed by a comma. section 225(f) of Pub. L. 116–260, set out as a note under section 1066a of this title. § 1067. Interference, opposition, and proceedings for concurrent use registration or for can- cellation; notice; Trademark Trial and Ap- peal Board (a) In every case of interference, opposition to registration, application to register as a lawful concurrent user, or application to cancel the registration of a mark, the Director shall give notice to all parties and shall direct a Trade- mark Trial and Appeal Board to determine and decide the respective rights of registration. (b) The Trademark Trial and Appeal Board shall include the Director, Deputy 1 Director of the United States Patent and Trademark Office 2 the Commissioner for Patents, the Commis- sioner for Trademarks, and administrative trademark judges who are appointed by the Sec- retary of Commerce, in consultation with the Director. (c) AUTHORITY OF THE SECRETARY.—The Sec- retary of Commerce may, in his or her discre- tion, deem the appointment of an administra- tive trademark judge who, before August 12, 2008, held office pursuant to an appointment by the Director to take effect on the date on which the Director initially appointed the administra- tive trademark judge. (d) DEFENSE TO CHALLENGE OF APPOINTMENT.— It shall be a defense to a challenge to the ap- pointment of an administrative trademark judge on the basis of the judge’s having been origi- nally appointed by the Director that the admin- istrative trademark judge so appointed was act- ing as a de facto officer. (July 5, 1946, ch. 540, title I, § 17, 60 Stat. 434; Pub. L. 85–609, § 1(a), Aug. 8, 1958, 72 Stat. 540; Pub. L. 93–596, § 1, Jan. 2, 1975, 88 Stat. 1949; Pub. L. 96–455, § 1, Oct. 15, 1980, 94 Stat. 2024; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4716], Nov. 29, 1999, 113 Stat. 1536, 1501A–580; Pub. L. 107–273, div. C, title III, § 13203(a)(1), Nov. 2, 2002, 116 Stat. 1902; Pub. L. 110–313, § 1(b), Aug. 12, 2008, 122 Stat. 3014.) Editorial Notes PRIOR PROVISIONS Act Feb. 20, 1905, ch. 592, § 7, 33 Stat. 726. AMENDMENTS 2008—Subsec. (b). Pub. L. 110–313, § 1(b)(1), inserted ‘‘Deputy Director of the United States Patent and Trademark Office’’ after ‘‘Director,’’ and substituted ‘‘appointed by the Secretary of Commerce, in consulta- tion with the Director’’ for ‘‘appointed by the Direc- tor’’. Subsecs. (c), (d). Pub. L. 110–313, § 1(b)(2), added sub- secs. (c) and (d). 2002—Subsec. (b). Pub. L. 107–273, which directed amendment of subsec. (b) by inserting ‘‘the Deputy Commissioner,’’ after ‘‘Commissioner,’’, could not be executed because ‘‘Commissioner,’’ does not appear in text. 1999—Pub. L. 106–113 amended section generally. Prior to amendment, section read as follows: ‘‘In every case of interference, opposition to registra- tion, application to register as a lawful concurrent user, or application to cancel the registration of a mark, the Commissioner shall give notice to all parties and shall direct a Trademark Trial and Appeal Board to determine and decide the respective rights of registra- tion. ‘‘The Trademark Trial and Appeal Board shall in- clude the Commissioner, the Deputy Commissioner, the Assistant Commissioners, and members appointed by the Commissioner. Employees of the Patent and Trade- mark Office and other persons, all of whom shall be competent in trademark law, shall be eligible for ap- pointment as members. Each case shall be heard by at least three members of the Board, the members hearing such case to be designated by the Commissioner.’’ 1980—Pub. L. 96–455 inserted provisions requiring that the Trademark Trial and Appeal Board include the Deputy Commissioner and members appointed by the Commissioner and provisions that employees of the Patent and Trademark Office and other persons, all of whom shall be competent in trademark law, shall be el- igible for appointment as members; and struck out pro- vision that the Board include Patent and Trademark Office employees, designated by the Commissioner and whose qualifications have been approved by the Civil Service Commission as being adequate for appointment to the position of examiner in charge of interferences. 1975—Pub. L. 93–596 substituted ‘‘Patent and Trade- mark Office’’ for ‘‘Patent Office’’. 1958—Pub. L. 85–609 substituted ‘‘a Trademark Trial and Appeal Board’’ for ‘‘the examiner in charge of interferences’’ in first paragraph, and inserted second paragraph relating to the composition of the Board. 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 1980 AMENDMENT; BOARD MEMBERSHIP AS OF OCTOBER 15, 1980, UNAFFECTED Pub. L. 96–455, § 2, Oct. 15, 1980, 94 Stat. 2024, provided that: ‘‘This amendment [amending this section] shall become effective on the date of its enactment [Oct. 15, 1980]. Members of the Trademark Trial and Appeal Board on the date of enactment shall continue to be members under and in accordance with the provisions of section 17 of the Act of July 5, 1946, as amended [this section], in effect immediately preceding the date of enactment.’’ 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. EFFECTIVE DATE OF 1958 AMENDMENT Pub. L. 85–609, § 3, Aug. 8, 1958, 72 Stat. 541, provided that: ‘‘This Act [amending this section and sections 1070, 1071, 1092, and 1113 of this title] shall take effect on approval [Aug. 8, 1958]; it shall apply to ex parte ap- peals taken to the Commissioner prior to the date of approval which have not been heard but shall not apply to any such appeal which has been heard or decided in which event further proceedings may be had as though this Act had not been passed; it shall apply to inter partes cases instituted prior to the date of approval which have not been heard by an examiner of inter- ferences, but shall not apply to any such case which has been heard or decided by an examiner of interferences in which event further proceedings may be had as though this Act had not passed.’’ REPEAL AND EFFECT ON EXISTING RIGHTS Repeal of inconsistent provisions, effect of this chap- ter on pending proceedings and existing registrations