15 USC 1066 - Ex parte reexamination

View all text of Subchapter I [§ 1051 - § 1072]

§ 1066b. Ex parte reexamination

(a) Petition for reexamination

(b) Relevant dateIn 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 section 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, including all approved extensions thereof.

(1) identify the registration that is the subject 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 investigation the petitioner conducted to determine that the mark was not in use in commerce 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

(2) Reasonable investigation guidance

(3) Determination by Director

(e) Reexamination proceduresThe procedures for reexamination shall be the same as the procedures established under section 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 particular to this type of proceeding, which, notwithstanding section 1062(b)(3) of this title, 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 reexamination proceeding under this section to other proceedings concerning the mark.

(f) Registrant’s evidence of use

(g) Examiner’s decision; order to cancel

(h) Reexamination by Director

(1) In general

(2) Rule of construction

(i) Time for institution

(j) Limitation on later ex parte reexamination proceedings

(1) No co-pending proceedings

(2) Estoppel

(k) Supplemental register

(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.)