We are in trying times. The Coronavirus known as Covid-19 has impacted the world. Businesses are trying to navigate how to operate in the middle of a pandemic. Emergency orders are continually coming out from all levels of government regarding essential and non-essential businesses, including “stay at home” orders. What if you are deemed a non-essential business and your business is effectively shutdown as a result? While direct revenue is likely a pressing concern, what about the brands around your products or services that you have built over the years?
Trademark law is centered upon use of a brand in commerce. Without use, the brand will eventually become abandoned. After three years of non-use without any attempt to resume use, the USPTO will presume the owner abandoned the brand. Section 71 of the Trademark Act is designed to remove “deadwood” from the register. However, it is not designed to cancel registrations due to a temporary interruption of use of the brand due to circumstances beyond the control of the trademark owner.
The Trademark Manual of Examination and Procedure (TMEP) details excusable (and non-excusable) non-use of a brand. See TMEP 1613.11.
Some examples of excusable non-use include:
- Trade Embargo or Other Circumstance Beyond Holder’s Control (Covid-19?): When the holder of the registered brand is willing and able to continue use of the brand in commerce, but is unable to do so due to a trade embargo
- Sale of Business: Temporary non-use during the sale
- Retooling: Limited circumstances if the tooling was critical and there was no other means to produce without the shutdown for tooling
- Orders on Hand: If the product is the kind of good that cannot be produced quickly or in large numbers (for example, airplanes), but there are orders on hand and activity toward filling them
- llness, Fire, and Other Catastrophes (Covid-19?): Illness, fire, and other catastrophes may create situations of temporary non-use, with the holder being able to outline arrangements and plans for resumption of use. Note, illness of the owner does not qualify as excusable non-use unless the business cannot operate without the owner
Examples of non-excusable non-use:
- Business Decision: A business decision to stop use of the brand is not beyond the holder’s control
- Decreased Demand: Decreased demand for the product sold under the brand, resulting in its discontinuance for an indefinite period
- Negotiations with Distributors: Helps to show lack of intention to abandon the mark but not excusable non-use
- Use in Foreign Country: This has no bearing on excusable non-use in the United States that can be regulated by the U.S. Congress (use in commerce)
- Use of Mark on Different Goods/Services: Using the brand on goods/services outside of the registered class
- Use of Mark in Another Form: Material changes to mark
Non-use of a brand due to Covid-19 may be covered as excusable non-use under “Other Circumstance Beyond Holder’s Control” and/or “Catastrophe”. If you have stopped using your brand, it is advisable to document the date you stopped using the brand in all related products and/or services covered by your trademark registration, including why you stopped using the brand. For example, shutdown orders by the government, lack of supply chain to make the products, or workers contracting Covid-19 and directly impacting your facilities. Documenting this situation will suport a declaration surrounding excusable non-use if or when you need to provide justification for the gap of time for non-use of your brand(s). You had spent considerable time and money building your brand through the years. It is important you take the necessary steps to protect the brand if use has temporarily stopped during this pandemic.
For any questions about excusable non-use or to look into protecting your brands, contact Greg Popowitz.
Make Your IP Pop
Registered Patent Attorney / Partner
Intellectual Property Litigation
213 East Sheridan Street, Suite 3
Dania Beach, Florida 33004