Excusable nonuse of a trademark occurs when circumstances beyond the control of a trademark owner causes a temporary interruption in the use of the mark. The concept of excusable nonuse most frequently arises when it comes time for the owner of a U.S. trademark registration to file the Section 8 Declaration of Use or the Section 71 Declaration of Use with the United States Patent and Trademark Office (USPTO). Normally, both of these declarations require verification that the registered trademark is in use in commerce in order to prevent the registration from being canceled.
However, if the trademark is not in use in commerce, but the owner believes the registration shouldn’t be canceled, the owner may file the Section 8 Declaration or Section 71 Declaration (as appropriate) showing that nonuse is due to special circumstances that excuse the nonuse. In other words, that such nonuse isn’t due to any intention by the owner to abandon the trademark.
What Are the Requirements for a Declaration of Excusable Nonuse?
If your trademark is registered under Section 1(a) (use in commerce), the Declaration must state when use in commerce stopped and must give the approximate date when use of your mark is expected to resume. Furthermore, the Declaration must indicate the reasons for nonuse, the specific steps being taken to put your trademark back in use, and any other relevant facts to support a finding of excusable nonuse by the USPTO. Please note that these requirements equally apply to trademarks that were previously in use in the United States and are registered under Section 44(e) (U.S. registration based on a foreign trademark registration) or Section 66(a) (extension of protection under the Madrid Protocol).
Now, if your trademark is registered under Section 44(e) or Section 66(a) and you never actually commenced use of your mark in the United States, the Declaration must instead state that your mark was never in use and must give the approximate date when use is anticipated to begin. In addition, the Declaration must indicate the reasons for nonuse, the specific steps being taken to commence use of your mark in the United States, and any other relevant facts to support a finding of excusable nonuse by the USPTO.
Examples of Special Circumstances That May Excuse Nonuse
The USPTO provides some general examples of special circumstances that may demonstrate excusable nonuse:
- A trade embargo that prevents the trademark owner from selling its products/services
- The sale of the trademark owner’s business to another party
- Interruption of product production due to retooling of a factory or manufacturing equipment
- Catastrophes such as fires, natural disasters, or terrorist attacks
- The severe illness or death of a person who is integral to the operation of the business or organization
And here are some examples of circumstances that don’t demonstrate excusable nonuse:
- Use of the trademark solely in a foreign country
- Decreased demand for the products/services for which the trademark is registered that results from ordinary changes in economic or social conditions
- Nonuse related to a simple business decision by the trademark owner
- Use of the trademark in connection with products/services other than those listed in the registration
What Happens After I File the Declaration of Excusable Nonuse?
If the USPTO determines that the facts and information you provided in the Declaration establish excusable nonuse, then the Declaration will be accepted and your trademark registration will remain active. On the other hand, if the USPTO believes that you failed to show excusable nonuse and/or satisfy all other legal requirements, then you will receive a post-registration office action indicating why the Declaration could not be accepted. You will then have the opportunity to submit additional evidence and provide further explanation as to why the USPTO should find excusable nonuse of your trademark and accept the Declaration. In the unfortunate event that you’re unable to convince the USPTO that your nonuse is excusable, your trademark registration will be canceled.
Need Some Help With the Declaration of Excusable Nonuse?
I’m experienced US trademark attorney Morris Turek. If you don’t have any current use of your trademark and you either (1) aren’t sure if you’re eligible to file the Declaration of Excusable Nonuse under Section 8 or Section 71, or (2) need some professional assistance with filing the Declaration, please don’t hesitate to contact me at your convenience for your 100% free consultation. You can reach me at (314) 749-4059, via email at morris@yourtrademarkattorney.com, or by submitting the contact form located at the bottom of this page. I look forward to hearing from you soon.