Nonuse of Trademarks Due to Economic Hiatus: Maintaining Registration, Navigating Excusable Nonuse

Description

Thousands and thousands of trademarks are due for renewal each year and the time of COVID-19 is no different. COVID has caused the temporary shutdown of some businesses, which may include the nonuse of some marks.

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.

If the mark is not in use when the owner must file the declaration, owners should consider the option of claiming that the nonuse is excusable. When claiming excusable nonuse, owners should include additional information than would typically be included. Also, counsel may consider the use of a declaration of excusable nonuse in the alternative.

Listen as our authoritative panel of IP attorneys examines excusable nonuse, including the impact of COVID and the guidance from recent cases. The panel will also review use audits, their implications, and how non-U.S. jurisdictions handle temporary nonuse.