U.S. trademark owners must file regular maintenance documentation with the U.S. Patent and Trademark Office (“USPTO”) to show that the owner is still using its trademark “in commerce” during the period leading up to the maintenance deadline. The COVID-19 crisis has disrupted businesses and some owners may have had to shut their doors or stop selling products. How do trademark owners maintain their trademark registrations if their businesses have been disrupted?
The USPTO is allowing certain maintenance extensions and other relief for trademark applicants and owners affected by COVID-19. Even beyond these extraordinary provisions, the USPTO provides a trademark owner with options to maintain registrations of trademarks not in use, under certain circumstances. If an owner does not have an intention to abandon the mark and circumstances beyond the trademark owner’s control cause the nonuse, the owner may renew a mark with proof of “excusable nonuse” rather than with proof of use.
Not all nonuse qualifies as “excusable.” The USPTO provides examples where a trademark owner has ceased use of a trademark and whether that nonuse is excusable. These are the circumstances in which the USPTO says a trademark owner may qualify for excusable nonuse.
- Trade Embargo or Other Circumstance Beyond Owner’s Control. The USPTO may excuse the temporary nonuse of a trademark where the owner of the registration is willing and able to continue use of the trademark in commerce, but is unable to do so due to a trade embargo.
- Illness, Fire, and Other Catastrophes. Illness, fire, and other catastrophes may create situations of temporary nonuse, with the owner being able to outline arrangements and plans for resumption of use. Such nonuse is often excusable. However, a mere statement that the owner is ill and cannot conduct his or her business will not in itself excuse nonuse. In this example, an owner must show that the business is an operation that could not continue without his or her presence.
- Sale of a Business. The USPTO may excuse the temporary nonuse of a trademark due to the sale of a business.
- Retooling. If a trademark is out of use temporarily because of an interruption of production for retooling of a plant or equipment and production is possible again at a scheduled time, then the USPTO may excuse this temporary nonuse of a trademark.
- Orders on Hand. If the product is of a type that cannot be produced quickly or in large numbers (e.g., airplanes) and there are orders on hand and the owner has activity toward filling the order, then the USPTO may excuse the temporary nonuse of a trademark.
- Business Decision. The USPTO will not excuse nonuse of a trademark if an owner’s nonuse is related to a business decision that is within the owner’s control.
- Decreased Demand. Decreased demand for the product sold under a trademark, resulting in its discontinuance for an indefinite period, does not excuse nonuse. The purpose of the requirement for an affidavit or declaration is to eliminate registrations of trademarks that are in nonuse due to ordinary changes in social or economic conditions.
- Negotiations with Distributors. A recitation of efforts to negotiate agreements that would allow for resumption of use of a trademark, or a statement that samples of the goods have been shipped to potential distributors, may establish lack of intention to abandon a trademark, but does not establish the existence of special circumstances that excuse the nonuse.
- Use in Foreign Country. Use of the mark in a foreign country has no bearing on excusable nonuse of a trademark in commerce that can be regulated by the United States Congress.
- Use of Mark on Different Goods/Services. Use of a trademark on goods/services other than those recited in the registration does not establish either special circumstances or lack of intention to abandon the mark.
In view of the above, if a trademark owner is not selling its products or providing its services due to COVID-19, then the USPTO may consider it acceptable nonuse because it is a circumstance beyond the owner’s control. If so, then the trademark owner may still be able to maintain a registration during the nonuse period with a declaration of excusable nonuse. To submit a declaration of excusable nonuse, the trademark owner must provide information on when use stopped, the reason for nonuse, an approximate restart date, the owner’s planned steps to resume use, and any other relevant facts.