Excusable Nonuse of a Trademark Due to Coronavirus

March 23, 2020Alerts

With the closure of “non-essential” businesses throughout the country and the world, the use of trademarks on and in connection with products and services may be interrupted or altogether halted for a period of time. This interruption in use may be untimely for those owners of trademark registrations within the statutory periods for maintaining a U.S. trademark registration. The periods within which to maintain a registration include between the fifth and sixth anniversaries of the date of US registration; and within the year before the end of every ten-year period after the date of US registration (or the six-month grace period after the expiration of those deadlines).

Fortunately, the US Trademark Act built in a safeguard to avoid cancelation of a registration because of a temporary interruption in the use of the mark and an owner’s inability to file a declaration of use due to circumstances beyond the control of the owner of the registration or "forced by outside causes." Under the U.S. Trademark Act, if the registered mark is not in use in commerce on or in connection with all the goods, services, or classes specified in the registration during the period within which to maintain its registration, the owner may file a declaration of nonuse. If a trademark owner seeks to excuse its nonuse, the declaration must set forth the following:

(1) the date when such use of the mark in commerce stopped;

(2) the approximate date when such use is expected to resume; and

(3) recite facts to show that nonuse as to those goods, services, or classes is due to special circumstances that excuse the nonuse and is not due to an intention to abandon the mark. See 37 C.F.R. §2.161.

Sufficient facts must be set forth in the declaration of nonuse to demonstrate clearly that nonuse in the United States is due to the special circumstances surrounding the coronavirus. Even if the deadline for maintaining an owner’s registration is not impending, the trademark owner should nonetheless maintain records of the aforementioned dates and facts surrounding its nonuse as its use and ability to file a declaration of use may be impacted in the future by the coronavirus.

Currently, the U.S. Patent and Trademark Office has not modified any deadlines, since most U.S. patent and trademark deadlines are fixed by statute. Therefore, the deadline by which to file the affidavit or declaration of use or excusable nonuse remains unaltered.  Thus, the option of filing a Declaration of Nonuse may prove useful to those owners of US registrations who may suffer disruptions, due to the economic effects of the coronavirus.