A federal trademark registration can last indefinitely, but the trademark owner must periodically file the correct paperwork with the trademark office to keep the registrations active. The trademark office does not remind trademark owners of due dates and often trademarks which are still being used lose their registrations by the failure of the trademark owners to timely file the required affidavits.
Affidavit of Continued Use
While a United States trademark registration purportedly lasts ten (10) years, the first affidavit of continued use required by the trademark office occurs between the fifth and sixth years of registration. If the trademark owner misses this deadline, the registration will be cancelled automatically and without warning. The second affidavit is due between the ninth and tenth years of the registration. These affidavits are typically called “Section §8” affidavits in reference to the section of the United States code in which they appear, 15 U.S.C. § 1508. That section states in part:
15 U.S.C. §1058. Duration, affidavits and fees.
(a) Time Periods for Required Affidavits. Each registration shall remain in force for 10 years, except that the registration of any mark shall be canceled by the Director unless the owner of the registration files in the United States Patent and Trademark Office affidavits that meet the requirements of subsection (b), within the following time periods:
(1) Within the 1-year period immediately preceding the expiration of 6 years following the date of registration under this Act or the date of the publication under section 12(c).
(2) Within the 1-year period immediately preceding the expiration of 10 years following the date of registration, and each successive 10-year period following the date of registration.
(3) The owner may file the affidavit required under this section within the 6-month grace period immediately following the expiration of the periods established in paragraphs (1) and (2), together with the fee described in subsection (b) and the additional grace period surcharge prescribed by the Director.
(b) Requirements for Affidavit. The affidavit referred to in subsection (a) shall—
(1)(A) state that the mark is in use in commerce;
(B) set forth the goods and services recited in the registration on or in connection with which the mark is in use in commerce;
(C) be accompanied by such number of specimens or facsimiles showing current use of the mark in commerce as may be required by the Director; and
(D) be accompanied by the fee prescribed by the Director;
As set out in the Section § 8 affidavit requirements, in order to keep a registration active, an owner must actually be using the mark in commerce on the goods or services identified in the registration. If the during the window of time when the affidavit must be filed the owner is not using the mark in commerce, the owner must file evidence with the trademark office that this nonuse is “excusable.”
Excusable Nonuse
If there has been an excusable lapse in usage of the trademark by its owner, the owner may still keep the trademark registration alive. As set out in the trademark manual of examining procedure (“TMEP”) section 1604.11,
The purpose of Section 8 of the Trademark Act is to remove from the register those registrations that have become deadwood. See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715 (C.C.P.A. 1969). It is not intended, however, to cancel registrations because of a temporary interruption in the use of the mark due to circumstances beyond the control of the owner of the registration. In re Moorman Mfg. Co., 203 USPQ 712 (Comm’r Pats. 1979).
Thus, if the mark is not in use in commerce but the owner believes the registration should not be cancelled, the owner may file an affidavit or declaration showing that nonuse is due to special circumstances that excuse the nonuse, and is not due to any intention to abandon the mark. 15 U.S.C. §1058(b)(2). Ex parte Kelley-How-Thomson Co., 118 USPQ 40 (Comm’r Pats. 1958).
In order to continue a registration for a trademark which is not currently being used, however, the trademark owner must provide the trademark office sufficient evidence that special circumstances exist which justify keeping the registration active. The TMEP advises,
Since “showing” implies proof, merely stating that special circumstances exist and there is no intention to abandon the mark is not sufficient. In re Conusa Corp., 32 USPQ2d 1857 (Comm’r Pats. 1993); In re Moorman Mfg. Co., supra; Ex parte Astra Pharmaceutical Products, Inc., 118 USPQ 368 (Comm’r Pats. 1958); Ex parte Denver Chemical Mfg. Co., 118 USPQ 106 (Comm’r Pats. 1958). The affidavit must state when use in commerce stopped and give the approximate date when use is expected to resume. 37 C.F.R. §2.161(f)(2). It should also specify the reason for nonuse, the specific steps being taken to put the mark back in use, and any other relevant facts. Sufficient facts must be set forth to demonstrate clearly that nonuse is due to some special circumstance beyond the owner’s control or “forced by outside causes.” In re Conusa Corp., supra; In re Moorman Mfg. Co., supra; Ex parte Kelley-How-Thomson Co., supra.
If the time of nonuse has been particularly long, however, there is a presumption that the trademark has been abandoned by its owner. Three consecutive years of nonuse all but guarantees that the trademark office will decide that the mark has been abandoned.
The TMEP further provides some guidance as to what facts justify “excusable” nonuse and which do not. Specifically, the trademark office requires a showing (i) that the owner does not intend to abandon them mark and (ii) that the nonuse by the owner is beyond the owner’s control.
The second factor can be particularly tricky to demonstrate. For example, if there was a business decision not to use a trademark, that decision is not beyond the owner’s control. Likewise a decreased demand for the product or service will not be sufficient to show excusable nonuse. By contrast, a trade embargo or an interruption in production for retooling manufacturing equipment may be sufficient excusable nonuse.
Factors which the trademark office does not consider relevant to the nonuse analysis include use of the mark in a foreign country or use of the mark on different goods or services not identified in the registration.