‘‘(3) DETERMINATION BY DIRECTOR.—Any deter-
mination 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 promul-
gate regulations establishing and governing a proceeding 
under this section, which may include regulations that set 
response and extension times particular to this type of pro-
ceeding, 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). 
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‘‘(g) EXAMINER’S DECISION; ORDER TO CANCEL.—For 
each good or service for which it is determined that the reg-
istration should not have issued because the mark was not 
in use in commerce 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 initiative, institute an ex parte reex-
amination proceeding if the Director discovers infor-
mation that supports a prima facie case of the mark 
having not been used in commerce on or in connec-
tion 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 
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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 au-
thority 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 REEXAMINA-
TION PROCEEDINGS.— 
‘‘(1) NO CO-PENDING PROCEEDINGS.—With re-
spect 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 pro-
ceeding. 
‘‘(2) ESTOPPEL.—With respect to a particular 
registration, for any goods or services previously sub-
ject to an instituted ex parte reexamination pro-
ceeding for which, in that proceeding, it was deter-
mined that the registrant had used the mark for par-
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ticular goods or services before the relevant date, and 
the registration was not cancelled as to those goods or 
services, no further ex parte reexamination pro-
ceedings may be initiated as to those goods or serv-
ices, 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 REEXAM-
INATION.—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 re-
newal, or a registrant subject to an ex parte 
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expungement proceeding or an ex parte reexam-
ination 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 amend-
ed— 
(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 fol-
lowing: ‘‘Registrations on the supplemental register 
are subject to ex parte expungement and ex parte re-
examination under sections 16A and 16B, respec-
tively.’’. 
(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). 
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(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 find-
ing 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 pre-
sumption of irreparable harm before the date of the enact-
ment 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 
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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 trade-
mark 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, 
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including any proceedings instituted by the Di-
rector’s own initiative; 
(D) the average time taken to resolve pro-
ceedings instituted under each such section, in-
cluding the average time between— 
(i) the filing of a petition under each 
such section and an examiner’s final deci-
sion 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 pro-
ceedings 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 pro-
ceeding; and 
(F) an accounting of the final outcome of 
each such proceeding instituted by identifying 
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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 para-
graph (A) above, the number of applications in 
which the third-party submission evidence is in-
cluded in the application; and 
(C) of those applications identified in para-
graph (B) above, the number of applications— 
(i) refused registration based on an as-
sertion 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 
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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 enact-
ment 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 Gen-
eral of the United States shall submit to the Committee on 
the Judiciary of the House of Representatives and the Com-
mittee 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 DI-
RECTOR. 
(a) AMENDMENTS.— 
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(1) Section 18 of the Trademark Act of 1946 (15 
U.S.C. 1068) is amended by inserting after ‘‘estab-
lished in the proceedings’’ the following: ‘‘. The au-
thority of the Director under this section includes the 
authority to reconsider, and modify or set aside, a de-
cision 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 au-
thority to reconsider, and modify or set aside, a deci-
sion 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) 
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may not be construed to require the Director to recon-
sider, 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 sub-
mission of evidence relating to a trademark application, 
to establish expungement and ex parte proceedings relat-
ing to the validity of marks, to provide for a rebuttable 
presumption of irreparable harm in certain proceedings, 
and for other purposes.’’. 
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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 pro-
ceedings, 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 or-
dered to be printed 
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