If a mark owner stops using a trademark for a sufficiently long period, his rights may become vulnerable to third-party claims of abandonment. To maintain a federal trademark registration, trademark owners periodically must file declarations of continued use with the USPTO. COVID per se does not automatically suspend the duty to file such declarations of use. However, the failure to do so or to explain the reasons for non-use would result in loss of registrations and could give rise to claims that common law rights in the marks have been abandoned.
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.
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.
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 intellectual property counsel.
Do not hesitate to contact the attorneys at Tishkoff if you have questions regarding intellectual property, litigation, or business or employment law.
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