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USPTO Issues Guidance for Claiming Excusable Nonuse of a Trademark Due to COVID-19

Carrie A. Johnson

Trademark Symbol   Under U.S. law, a trademark owner must periodically file a Section 8 declaration of use with a specimen showing use of the mark to demonstrate that the mark continues to be in use in U.S. commerce.  A Section 8 declaration is required between the fifth and sixth anniversaries of the date of the U.S. registration and within the year before the end of every ten-year anniversary of the date of registration.  There is also a six-month grace period for late filings after the expiration of those maintenance deadlines. Failure to timely file the required maintenance documents will result in the cancellation of the registration.  

USPTO Accepting COVID-19 as an Excusable Nonuse for Section 8 Filings 

   The pandemic has created many challenges for trademark owners, including business closures, illness of business owners and employees, and supply interruptions and shortages.  It is no surprise that under such trying circumstances, the use of trademarks on products and services may be interrupted or stopped for a period of time.  Although it is possible to assert excusable nonuse if a mark is not in use at the time a maintenance filing is due, the circumstances that have historically constituted excusable nonuse are very limited and there has been uncertainty regarding whether the USPTO would accept a cessation in use caused by COVID-19 (a.k.a. coronavirus) as qualifying.  Recently, the U.S. Patent and Trademark Office (USPTO) put an end to the uncertainty by announcing it will accept circumstances related to COVID-19 as an excusable nonuse in trademark maintenance filings.  This means trademark owners may request to be temporarily excused from using their trademark if COVID-19 has had a direct impact on the trademark owner or its business that prevented use of the trademark. 

Requirements for Requesting Excusable Nonuse 

   Trademark owners may request excusable nonuse by providing a statement with a Section 8 declaration that includes: 

   Additional details may be found on the USPTO’s web site

   For questions regarding Section 8 filings or how addressing how the pandemic may have affected your intellectual property, please contact Ms. Johnson. 



   At the date of publication, the above information was correct. It is quite possible the information above has changed as COVID-19 is a rapidly evolving situation.

   The article in this publication has been prepared by Eastman & Smith Ltd. for informational purposes only and should not be considered legal advice. This information is not intended to create, and receipt of it does not constitute, an attorney/client relationship.