Trademark Alert: USPTO Announces Temporary Excusable Nonuse Exemption for Trademark Owners Impacted by COVID-19

Dunlap Bennett & Ludwig PLLC

In response to the protracted impact of COVID-19, the US Patent and Trademark Office (USPTO) has determined that the pandemic constitutes an extraordinary situation warranting several announcements over the past year that suspended certain rules relating to trademark filings. Most recently, an alert was issued on April 9, 2021, announcing relief for trademark owners that have experienced a disruption in the use of their mark and have upcoming maintenance filing deadlines. 

Under US law, a trademark owner must periodically file a Section 8 declaration, along with a proof of specimen, demonstrating that the mark continues to be in use in US commerce. These maintenance filings fall between the 5th and 6th years following registration and at every 10th anniversary of registration thereafter. Failure to file the declaration or to satisfy the requirements for its acceptance results in cancellation of the registration.

The pandemic presents several potential impediments to meeting the maintenance filing requirements, including mandated restrictions prohibiting or limiting operation of a business, illness of the business owner or employees, supply shortages, supply interruptions, and travel restrictions. If the mark is not in use at the time a filing is due, the owner may be able to secure the continued registration by asserting excusable nonuse; however, the circumstances that constitute excusable nonuse are very limited, and there has been some question as to whether or not the impact of a pandemic would qualify. Of concern were several instances since March 2020 where registered owners asserted that the pandemic or lockdown restrictions as the basis for nonuse, and the USPTO issued a first office action rejecting the excuse. 

Following a year of uncertainty, the USPTO has clarified that any trademark owner that has been impacted by COVID-19 resulting in a disruption in the use of a mark may request to be excused from the continuous use requirement and the specific information that must be presented to support the request. Excusable nonuse may be requested by providing a statement with a Section 8 declaration that includes the following;

  1. An explanation of how COVID-19 has affected the owner or business and caused the temporary stop in the use of the trademark for the products and services covered by the registration
  2. The date the trademark was last used
  3. The steps being taken to resume use, and
  4. The approximate date that use of the mark will resume.

It is recommended that each of the required points be addressed in detail to demonstrate how the pandemic has specifically affected a registered owner’s business and that the nonuse is beyond the owner’s control.  

It should be noted that assertion of excusable nonuse will impact the ability to file a Section 15 declaration of incontestability that is often filed with the first Section 8 filing. A Section 15 declaration provides stronger protection against cancellation of the registration but is dependent upon declaration in good faith that the goods or services have been in continuous use in commerce for the past five years. Excusable nonuse does NOT count towards the five-year period of continuous use for a declaration of incontestability. In such cases, even if a good faith Section 8 filing can be made based either on current use or excusable nonuse, a Section 15 declaration of incontestability cannot be submitted. Once use has resumed and there have been five new years of continuous use, the trademark will again have the opportunity to become incontestable. 

We strongly encourage trademark owners to review the details of maintenance filings with an attorney to avoid missteps that potentially jeopardize continued registration. 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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