H. R. 133—1019 
(2) Whether adjustments to the authority of the Copyright 
Claims Board are necessary or advisable, including with respect 
to— 
(A) eligible claims, such as claims under section 1202 
of title 17, United States Code; and 
(B) works and applicable damages limitations. 
(3) Whether greater allowance should be made to permit 
awards of attorneys’ fees and costs to prevailing parties, 
including potential limitations on such awards. 
(4) Potential mechanisms to assist copyright owners with 
small claims in ascertaining the identity and location of 
unknown online infringers. 
(5) Whether the Copyright Claims Board should be 
expanded to offer mediation or other nonbinding alternative 
dispute resolution services to interested parties. 
(6) Such other matters as the Register of Copyrights 
believes may be pertinent concerning the Copyright Claims 
Board. 
(f) SEVERABILITY.—If any provision of this section, an amend-
ment made by this section, or the application of such provision 
or amendment to any person or circumstance is held to be unconsti-
tutional, the remainder of this section and the amendments made 
by this section, and the application of the provision or the amend-
ment to any other person or circumstance, shall not be affected. 
Subtitle B—Trademarks 
SEC. 221. SHORT TITLE; TABLE OF CONTENTS. 
(a) SHORT TITLE.—This subtitle 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 subtitle 
is as follows: 
Subtitle B—Trademarks 
Sec. 221. Short title; table of contents. 
Sec. 222. Definitions. 
Sec. 223. Providing for third-party submission of evidence during examination. 
Sec. 224. Providing for flexible response periods. 
Sec. 225. Ex parte expungement; ex parte reexamination; new grounds for cancella-
tion. 
Sec. 226. Rebuttable presumption of irreparable harm. 
Sec. 227. Report on decluttering initiatives. 
Sec. 228. Amendments to confirm authority of the Director. 
SEC. 222. DEFINITIONS. 
In this subtitle: 
(1) DIRECTOR.—The term ‘‘Director’’ means the Under Sec-
retary 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 (15 U.S.C. 
1051 et. seq) (commonly referred to as the ‘‘Trademark Act 
of 1946’’ or the ‘‘Lanham Act’’).
H. R. 133—1020 
SEC. 223. 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 adding at the end the following: 
‘‘(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. Not later than 2 months after the date on which the 
submission is filed, the Director shall determine whether the evi-
dence 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 submis-
sion. 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 1 year after 
the date of enactment of this Act, the Director shall establish 
the appropriate procedures described in section 1(f) of the Trade-
mark Act of 1946, as added by subsection (a). 
(c) EFFECTIVE DATE.—The amendment made by subsection (a) 
shall take effect 1 year after the date of enactment of this Act. 
SEC. 224. 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 applica-
tion is abandoned as described in paragraph (2). 
‘‘(2) After notification under paragraph (1), the applicant shall 
have a period of 6 months in which to reply or amend the applica-
tion, or such shorter time that is not less than 60 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 6 months. The Director shall allow 
the applicant to obtain extensions of time to reply or amend aggre-
gating 6 months from the date of notification under paragraph 
(1) when the applicant so requests. However, the Director may
H. R. 133—1021 
set by regulation the time for individual periods of extension, and 
prescribe a fee, by regulation, for any extension request. Any request 
for extension shall be filed on or before the date on which a 
reply or amendment is due under paragraph (1).’’. 
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. 
‘‘(a) PETITION.—Notwithstanding sections 7(b) and 22, and sub-
sections (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 peti-
tion 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 docu-
ments 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
H. R. 133—1022 
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 documen-
tary 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 dem-
onstrated. 
‘‘(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 registra-
tion, 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 connec-
tion with any good or service covered by a registration. The 
Director shall promptly notify the registrant of such determina-
tion, 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