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How Can Trademark Use Continue When Most "Non-Essential" Businesses Have Closed in the Wake of the COVID-19 Pandemic?

March 30, 2020

Throughout the United States, and most of the world, all “non-essential” businesses have been shut down for an undetermined period of time due to the COVID-19 pandemic. [To view previous updates regarding Governor Lamont's Executive Orders dealing with "essential businesses," please click here.] 

This interruption of “non-essential” businesses, especially those businesses that do not have, or do not have the ability to have, an online presence may limit their ability to use their trademarks.  Trademark applicants and owners with upcoming maintenance deadlines, or applicants who are planning to file applications now may face a period of nonuse of their trademarks.  How do business shut downs in the wake of COVID-19 affect the filing of declarations of use for trademarks?

USPTO Response to COVID-19

In response to the global pandemic, the United States Patent and Trademark Office (USPTO) has closed its offices to the public and exercised its authority to ease requirements, excuse delays and waive fees.  The USPTO, unlike many foreign patent offices, has not yet extended due dates for trademark responses and other actions by trademark applicants and owners that are set by statute. 

Declarations of Nonuse

The United States Trademark Act includes a safeguard for a temporary interruption in a trademark’s use and for the owner’s inability to file a declaration of use.  This safeguard prevents a trademark’s cancellation because of temporary interruption in use of the mark that is beyond the owner’s control or forced by outside circumstances.  In the case of a temporary business shut down, such as those faced by many of our clients due to COVID-19, the owner of a trademark may file a declaration of nonuse setting forth the date when the use in commerce stopped, the approximate date when the use is expected to resume, and facts to show that nonuse is due to special circumstances that excuse the nonuse and not due to an intention to abandon the mark.  The USPTO considers the effects of COVID-19 to be an "extraordinary situation" within the meaning for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners.

The USPTO, to date, has not presented any specific guidelines for filing such declarations of nonuse.  The USPTO has not yet commented on the approximate date when the use of trademarks is expected to resume.  Accordingly, trademark owners and applicants should operate under the assumption that trademark use should resume when the business closures due to the COVID-19 pandemic are lifted. 

Best Practices

Regardless of any upcoming deadlines, it is always best practice for all trademark applicants and owners to maintain records of dates of use and facts surrounding nonuse to easily reference when a declaration of use that is due in the future may require it. 

If we can be of any assistance to you, please contact any of the lawyers in our Intellectual Property group.

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