IB 
Union Calendar No. 530 
116TH CONGRESS 
2D SESSION 
H. R. 6196 
[Report No. 116–645] 
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 proceedings, 
and for other purposes. 
IN THE HOUSE OF REPRESENTATIVES 
MARCH 11, 2020 
Mr. JOHNSON of Georgia (for himself, Mr. COLLINS of Georgia, Mr. NADLER, 
and Mrs. ROBY) introduced the following bill; which was referred to the 
Committee on the Judiciary 
DECEMBER 14, 2020 
Additional sponsors: Mr. CICILLINE, Mr. RESCHENTHALER, Mr. CLINE, Mr. 
DEUTCH, Mr. STANTON, and Mr. JACOBS 
DECEMBER 14, 2020 
Reported with amendments, committed to the Committee of the Whole House 
on the State of the Union, and ordered to be printed 
[Strike out all after the enacting clause and insert the part printed in italic] 
[For text of introduced bill, see copy of bill as introduced on March 11, 2020] 
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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 pro-
ceedings relating to the validity of marks, to provide 
for a rebuttal presumption of irreparable harm in certain 
proceedings, and for other purposes. 
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Be it enacted by the Senate and House of Representa-
tives of the United States of America in Congress assembled, 
SECTION 1. SHORT TITLE; TABLE OF CONTENTS. 
(a) SHORT TITLE.—This Act 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 Act is as follows: 
Sec. 1. Short title; table of contents. 
Sec. 2. Definitions. 
Sec. 3. Providing for third-party submission of evidence during examination. 
Sec. 4. Providing for flexible response periods. 
Sec. 5. Ex parte expungement; Ex parte reexamination; new grounds for cancella-
tion. 
Sec. 6. Rebuttable presumption of irreparable harm. 
Sec. 7. Report on decluttering initiatives. 
Sec. 8. Amendments to confirm authority of the Director. 
SEC. 2. DEFINITIONS. 
In this Act: 
(1) DIRECTOR.—The term ‘‘Director’’ means the 
Under Secretary of Commerce for Intellectual Prop-
erty and Director of the United States Patent and 
Trademark Office. 
(2) TRADEMARK ACT OF 1946.—The term ‘‘Trade-
mark Act of 1946’’ means the Act entitled ‘‘An Act to 
provide for the registration and protection of trade-
marks used in commerce, to carry out the provisions 
of certain international conventions, and for other 
purposes’’, approved July 5, 1946, as amended (15 
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U.S.C. 1051, et. seq) (commonly referred to as the 
‘‘Trademark Act of 1946’’ or the ‘‘Lanham Act’’). 
SEC. 3. PROVIDING FOR THIRD-PARTY SUBMISSION OF EVI-
DENCE DURING EXAMINATION. 
(a) AMENDMENT.—Section 1 of the Trademark Act of 
1946 (15 U.S.C. 1051) is amended by inserting at the end 
the following new subsection: 
‘‘(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 sub-
mission 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 in-
cluded in the record of the application. The Director shall 
establish by regulation appropriate procedures for the con-
sideration of evidence submitted by a third party under this 
subsection and may prescribe a fee to accompany the sub-
mission. If the Director determines that the third-party evi-
dence 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 
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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 one 
year after the date of the enactment of this Act, the Director 
shall establish the appropriate procedures described in sec-
tion 1(f) of the Trademark Act of 1946, as added by sub-
section (a). 
(c) EFFECTIVE DATE.—The amendment made by sub-
section (a) shall take effect one year after the date of the 
enactment of this Act. 
SEC. 4. 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 reg-
istration, 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 application is aban-
doned as described in paragraph (2). 
‘‘(2) After notification under paragraph (1), the appli-
cant shall have a period of six months in which to reply 
or amend the application, or such shorter time that is not 
less than sixty days, as prescribed by the Director by regu-
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lation. 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 satisfac-
tion of the Director that the delay in responding was unin-
tentional, 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 ex-
tensions of time to respond to the examiner for any time 
period under paragraph (2) that is less than six months. 
The Director must allow the applicant to obtain extensions 
of time to reply or amend aggregating six months from the 
date of notification under paragraph (1) when the appli-
cant so requests. However, the Director may set by regula-
tion the time for individual periods of extension, and pre-
scribe a fee, by regulation, for any extension request. Any 
request for extension must be filed on or before the date on 
which a reply or amendment is due under paragraph (1).’’. 
SEC. 5. EX PARTE EXPUNGEMENT; EX PARTE REEXAMINA-
TION; NEW GROUNDS FOR CANCELLATION. 
(a) EX PARTE EXPUNGEMENT.—The Trademark Act 
of 1946 (15 U.S.C. 1066) is amended by inserting after sec-
tion 16, the following new section: 
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‘‘SEC. 16A. EX PARTE EXPUNGEMENT. 
‘‘(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— 
‘‘(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 
the elements of the reasonable investigation the peti-
tioner 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 con-
nection 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. 
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‘‘(c) INITIAL DETERMINATION; INSTITUTION.— 
‘‘(1) PRIMA FACIE CASE DETERMINATION, INSTI-
TUTION, 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 com-
merce 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 deter-
mines 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 should include a copy of the 
petition and any supporting documents and evidence 
that were included with the petition. 
‘‘(2) REASONABLE INVESTIGATION GUIDANCE.— 
The Director shall promulgate regulations regarding 
what constitutes a reasonable investigation under sub-
section (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 deter-
mination by the Director whether or not to institute 
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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, except as provided by sub-
section (j). 
‘‘(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 gov-
erning a proceeding under this section, which may include 
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, 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 reg-
istrant’s documentary evidence of use must be consistent 
with when ‘a mark shall be deemed to be in use in com-
merce’ as defined 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 sec-
tion 44(e) or an extension of protection under section 66, 
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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 sub-
section (g) for any good or service for which excusable non-
use is demonstrated. 
‘‘(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 provi-
sions 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 have never been 
used in commerce if there is evidence of use in commerce 
by the registrant that temporally would have supported reg-
istration at the time the application was filed or the rel-
evant 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 registration, in whole or in part, 
after the time for appeal has expired or any appeal pro-
ceeding has terminated. 
‘‘(h) EX PARTE EXPUNGEMENT BY THE DIRECTOR.— 
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