In the United States, trademarks are valid so long as they are in continuous use in commerce. What happens if you are not able to use your trademark in association with your registered goods and/or services due to circumstances beyond the trademark owner’s control? Given the current global climate and with more than 50% of the U.S. population currently ordered to stay at home, what if your business temporarily cannot produce its goods or deliver its services? What if you source your products from a country also similarly on lockdown? Will you still be able to maintain or renew your trademark if you have an upcoming due date? The short answer is there is an exemption for scenarios like this called excusable non-use.
Trademarks must be in continuous use to be renewed
Between the fifth and sixth years after registration and again between the ninth and tenth years after registration and every ten years thereafter, U.S. trademark owners must prove they are continuously using their trademarks in commerce in order to keep their trademark registrations alive. This is accomplished by filing a Declaration of Continued Use with the USPTO. Specimens of use must be filed for all the goods and/or services listed in your trademark registration. If your maintenance or renewal deadline is coming up soon, and your business is temporarily shut down or its mission is diverted, do not despair. You may still be able to meet your statutory deadline and keep your trademark rights. However, please discuss this with a qualified trademark attorney before resorting to invoke this excuse, as it could have ramifications for enforcement or other proceedings later.
What qualified as excusable non-use of a trademark?
In circumstances of illness, fire or other catastrophes where the owner specifically outlines how it plans to resume the use of its trademark in connection with its goods and/or services, the USPTO has generally excused the use. For these reasons, we believe that the current pandemic and stay at home orders would provide excusable non-use so long as the trademark owner can show (1) it had no intention to abandon its trademark, and (2) that the non-use is beyond the owner’s control. Trademark owners should still respond to all scheduled deadlines, choose the excusable non-use option, and state specifically under declaration when the use in commerce stopped and give the approximate date when use is expected to resume. Please note, however, that merely stating the trademark owner is ill or that the business has closed without a specific plan for resumption of your trademarked goods and/or services will likely not be enough to excuse the continued use requirement. The USPTO will let you know if it accepts your non-use submission.
Because trademarks are valuable business assets and your rights may be lost or challenged in the event of non-use, it is critically important to discuss any changes to your use with a qualified trademark attorney before proceeding. If you need assistance under the current world circumstances, or with any trademark issue, please contact us for assistance.
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a particular focus on trademark prosecution and enforcement. She has protected some the world’s largest brands in more than 150 countries and specializes in helping small and medium sized businesses grow and protect their brands. Contact her at firstname.lastname@example.org.
Stacey is also the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.