Renewing Your Trademark-Excusable Non-Use
Renewing Your Trademark – Even after you have successfully registered a mark with the US Patent and Trademark Office, you are not done in ensuring your mark stays registered and protected. Your trademark application must be renewed 5-6 years after your first registration in order to maintain that registration. You must also renew the year before every ten-year period after the date of registration. Typically, when you renew a trademark, one of the requirements is showing that you have used the mark in commerce continuously since it has been registered. Absent a showing of “use,” your renewal will likely be denied, and the USPTO can audit you to confirm any declaration.
However, the Lanham Act (the act that largely governs trademark law) recognizes there are certain situations that are out of the control of the mark owner where the use of a mark may be prevented. In other words, there are situations that allow for “excusable non-use.” While there typically must be a showing of continuous use of the mark, if there is a showing of an excusable non-use, the registration will be maintained despite the non-use.
The US Patent and Trademark Office (USPTO) allows trademark owners to file a Declaration of Non-Use, which will save all or part of the registration lapsing. Ordinarily when you go to renewing your trademark, you must also file a declaration of use where you specify that all goods and services are in use, or you identify each separate good or service that is not in use. These items are then deleted from the registration, which can result in the entire registration lapsing. However, if you are able to state facts that show the non-use was caused by special circumstances outside your control rather than abandonment, then you may be able to submit a Declaration for Non-Use. 15 U.S.C. § 1058(b)(2).
There are several scenarios in which a Declaration of Non-Use may apply. Some of the most common of these are (1) an Act of God, such as a natural disaster, (2) litigation, which must be actual and ongoing, and (3) the sale of companies. In order to successfully submit a Declaration of Non-Use, you must do more than merely state there were circumstances that prevented use in commerce. The most common reasons for rejection of a Declaration of Non-Use are a decreased demand for the product or service and overall economic conditions.
So how do you show that there is excusable non-use? Luckily, there is a form available on the USPTO website. You will need to file a §8 form five to six years after your initial registration. You will need to provide information that states a list of the goods or services with which the trademark is not in use in commerce, the date of the last use of the mark in commerce, the approximate date when use is expected to resume, details regarding the reason for nonuse, and what specific steps are being taken to resume use. You must also state facts that show that the nonuse of the mark is due to special circumstances that excuse the nonuse and it is not due to an intention to abandon the mark. See 37 C.F.R. § 2.161.
Remember, the key is to show that the nonuse is due to a special circumstance outside of your control or is forced by outside causes. The more specific you can be, the better.
The Trademark Manual of Examining Procedure outlines examples of what constitutes acceptable non-use, as well as commentary on why these scenarios may or may not be considered excusable non-use. A trade embargo, sale of a business, retooling, orders on hand that cannot be produced quickly or in large numbers (such as an airplane), illness, fire, or other catastrophes may all constitute special circumstances that justify a declaration of excusable non-use. But remember, there is no guarantee that these will definitely qualify as excusable non-use. See TMEP § 1604.11. Additionally, the Manual also provides a list of situations which do not excuse non-use, including business decisions, decreased demand, negotiations with distributors, use in a foreign country, or the use of the mark on different goods or services. See TMEP § 1604.11.
If you are able to show that there is excusable non-use, then your trademark registration will be renewed and remain active. In the event that the USPTO determines that the declaration does not establish excusable non-use, then you may file supplementary evidence or an explanation within the time frame set forth by the denial from the USPTO. Failure to do so may result in cancellation or invalidation of the registration. As always, each situation is unique, so you should reach out to an attorney on the options that might be available in your given situation.
Remember (1) to add a digital calendar reminder ‘Renewing Your Trademark’ 5-6 years out so that you don’t overlook an inexpensive and required renewal in the maintaining of your mark, and (2), remember the simple saying: ‘Use it or Lose it’.