Excusable Non-Use – A Timely Option

   by Valerie Brennan

COVID-19 has caused many businesses to forcibly shutter in the U.S., temporarily, due either to state orders or necessary restrictions to protect employees and patrons.  To maintain federal trademark registrations, however, the owner must make periodic maintenance filings declaring that a registered mark remains in use in connection with the goods and/or services covered by the registration.  How can one maintain a U.S. federal registration during a pandemic-related closure?

Filing Requirements Generally.  Typically, maintenance filings (Section 8 or Section 71 Declarations) are due on or before the sixth anniversary of the registration date and on or before every tenth anniversary of a registration date.  (The filing may be made up to a year before the deadline.)  The Declaration must state that the mark is in use in connection with each and every claimed product or service (deleting any products or services no longer offered) and submit at least one sample of current use in connection with each class.

Use the Grace Period.  Like in most countries, U.S. trademark law allows a six-month grace period for maintenance filings.  In the U.S., the substance of a grace period filing is the same as a regular filing; however, there is a $100 additional fee for Section 8 filings (and an additional $100 fee for the renewal filing).  If you believe that use will have recommenced before the grace period expires, waiting to file during the grace period is a reasonable business choice.

File a Declaration of Excusable Non-Use.  A showing of Excusable Non-Use requires that there 1) be special circumstances that excuse the non-use and 2) not any intention to abandon the mark.  The Declaration needs to set out the facts evidencing the special circumstances that are beyond the owner’s control or “forced by outside causes.”  Trademark Manual Examining Procedure 1613.11.  The Declaration also must state when use ceased, approximately when use is expected to resume, and what steps are being taken to resume use.  In a multi-class registration, the Declaration should make clear that the dates apply to all classes or should provide different dates.  The Declaration should be signed by someone with actual knowledge of the facts, not by the owner’s outside counsel.  The signed Declaration is then attached to the electronic filing.

Examples of Excusable Non-Use.  Closure of a restaurant’s eat-in facilities due to a pandemic-related government order should constitute excusable non-use.  Sickness of a business owner, however, typically does not suffice without a showing that the business could not continue without the owner’s presence.  Keep in mind that statements made in the filings are public.  Decreased demand and overall economic conditions do not typically constitute excusable non-use.  In those situations, filing a new, intent-to-use application can be a better option.

Ongoing Use for Some Services.  If a restaurant’s registration covers services that continue to be offered, such as “delivery of food by restaurants” or “take-out restaurant services”, plus others that have ceased temporarily, such as “restaurant services”, then you may file a combined Declaration of Use and Excusable Non-Use.  You must specific which type of Declaration applies to each claimed service.

Timing of Filing.  If you anticipate re-commencing the offering before the expiration of the grace period, then you may want to wait and file then.  If circumstances outside your control continue to prevent you from filing the Declaration of Use, then you can file a Declaration of Excusable Non-Use.  If you need to respond to an office action during the grace period, however, a deficiency surcharge will apply.

Benefit of Filing Declaration of Use.  The benefits of filing of a Declaration of Use, even if you need to wait to the grace period to do so, are twofold.  Whether a Declaration of Excusable Non-Use is accepted is more subjective than a Declaration of Use.  In addition, demonstrating use in a public filing can be helpful to show third parties evaluating your mark that a challenge, such as one based on abandonment, is not warranted.

Now, go wash your hands.