If you are not using your trademark and there is a concern about maintaining your trademark registration, there are a couple of options. The first option is to figure out methods of using your trademark in some minimal way. The second option is to qualify for “excusable nonuse.” The experienced and top-rated Trademark attorneys here at Revision Legal offer the following discussion.

To be eligible for trademark registration under U.S. trademark laws, it is necessary — and legally required — that a trademark be used in interstate commerce. Essentially, that means that the trademark must be placed on the product, packaging, or shipping materials. With service-related trademarks, “use” means placing the trademark on signage, consumer-directed displays, correspondence, marketing materials, etc.

Demonstrating the use of your trademark requires presenting specimens of use to the US Patent and Trademark Office (USPTO) at the time of application and on the various renewal dates. Trademark registration must be renewed about every ten years.

Note that the use of a trademark is not a particularly high hurdle to clear. “Use” is defined as use during any given three-year period of time, and only a bare minimum of use is required. There are judicial decisions holding the “use” was established when the trademark was used on a website and in marketing and when it was placed on only a handful of the relevant goods which were shipped across State lines over a period of three years. Note that the trademark must be used for SALES of goods/services, and more than one sale must have taken place. A single sale is generally called a “token use” of the trademark, and that is not generally sufficient for consumer goods. (Note that a single sale is generally sufficient for large products — like very large and expensive machinery — that have only limited sales to begin with.)

So, as noted, if you are concerned about maintaining the registration of your trademark that is not really being used, one option is to create strategies for obtaining the minimal use necessary to satisfy the legal requirements.

The other option is to satisfy the rules for “excusable nonuse.” This means filing paperwork with the USPTO that admits to nonuse but claims that there are special circumstances that justify or excuse that nonuse. Generally, the owner of the trademark must admit to the nonuse, state that there was/is no intention to abandon the trademark, explain justifiable reasons for nonuse (that are not within the control of the trademark owner), and state when use will resume. Examples of where nonuse might be excusable include

• Existence of a trade embargo, government-ordered halts in business operations, etc., beyond the control of the owner of the trademark
• Sale of a business — might excuse temporary nonuse
• Essential and necessary retooling of a plant or equipment — might be deemed excusable nonuse
• With large products not usually produced quickly or in quantity (such as airplanes), orders on hand but not shipped — nonuse might be considered excusable.
• Fire, disasters, and other catastrophes
• Illness — only where the illness of the owner is shown, and it is also shown that business operation could not continue without the owner’s involvement; more likely with service-related trademarks
• And more

Contact the Trademark Attorneys at Revision Legal

For more information, contact the experienced Trademark Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.