By: Katelyn J. Dougherty, Esq.

Originally Published July 31, 2020 – Updated August 8, 2022

The United States Patent and Trademark Office (the “USPTO”) requires that a federally registered mark be used continually in association with the goods and/or services it was registered for. Continued use is one of the most important factors when it comes to maintaining the registration of a mark, whether a trademark, design mark, service mark, etc.

Due to the COVID-19 pandemic, questions arose as to what that meant for business owners who had to temporarily stop providing the goods and/or services associated with your federally registered mark. With over half the population still working from home, this is a very real situation. Especially, if the owner of a registered mark as a maintenance filing* coming due with the USPTO.

*A maintenance filing is a USPTO requirement that must be filed for each federally registered mark between the 5th and 6th years calculated from the registration date, and again between the 9th and 10th years calculated from the registration date.

Under §§71(a)(1) and (a)(2) of the Trademark Act, the owner of a registered mark “must file an affidavit or declaration of use or excusable non-use.” The purpose of the maintenance filings is to confirm, with the USPTO, that you are actively using the mark for the goods and/or services for which it is registered. The intent of Section 71 of the Trademark Act is to remove registered marks that are no longer active, accurate, useful, or productive. The goal is not to cancel registrations because the owner of the mark is experiencing a momentary disruption in the use of the mark due to circumstances beyond their control.

So, what happens if the owner of a registered mark was unable to maintain the active status during the pandemic, and it’s time to submit a maintenance report?

The USPTO has an exception called Excusable Non-Use. Excusable Non-Use means that the owner of the mark may file an affidavit or declaration with the USPTO, demonstrating that the registered mark should not be canceled for non-use due to their special circumstances, and that it is not their intention to abandon the mark in any way.

When filing the affidavit, it’s not enough to only state that unique circumstances resulted in the temporary non-use of the mark, and that there is no intent to abandon the mark. Sufficient facts must be specified in detail to clearly demonstrate that the non-use is due to the unique circumstances beyond the owner’s control. For example, if a business had to temporarily close pursuant to an Executive Order, include that fact, as well as a copy of the applicable Executive Order.

Additionally, for registered mark, the affidavit or declaration must include the date when the use in commerce** stopped, as well as the approximate date when use is anticipated to begin again. However, for a mark that is not yet registered (because it was filed as an Intent-to-Use mark) the owner should state that the mark has yet to become active due to the unique circumstances beyond the owner’s control, and provide an estimated date when they expect to start offering the goods and/or services again.

**Use in commerce means that your goods and/or services are available for others to purchase or use across state lines. Examples can be via a retail store, online, by appointment, etc. Note:

Will the mark meet the requirements of excusable non-use due to the pandemic?

Pursuant to the requirements outlined in Section 71 of the Trademark Act, so long as the reason for the non-use is outside of the owner’s control, and they will be able to resume the use of the mark in association with the same goods and/or services, the USPTO should accept the affidavit of declaration of non-use.

Furthermore, as COVID-19 was a worldwide pandemic with stay-at-home orders in place, it is reasonable to conclude that the USPTO will accept excusable non-use so long as the mark owner can further show that they have no intention to abandon their mark.

Still have questions?

Registered marks are an invaluable asset to your company. Therefore, if you are wondering when your next maintenance filing is due, how this pandemic affects your mark, or are considering changing the goods and/or services associated with your mark in order to adapt in these uncertain times, please contact us. We are here to assist you in navigating through this storm.

This Blog was written by Founding Attorney, Katelyn Dougherty.

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