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.

Trademark Abandonment: The Legal Definition and How to Avoid It

Trademark rights are use-based rights. In the United States, a trademark that is not being used in commerce faces potential abandonment — a legal determination that results in loss of trademark registration and enforceable rights. Businesses that pause operations, pivot products, or scale back temporarily need to understand exactly what “use” means under trademark law and what options exist when use becomes difficult or impossible to maintain.

Statutory Definition of Abandonment

Under 15 U.S.C. § 1127, a trademark is deemed abandoned when “its use has been discontinued with intent to abandon.” The statute creates a rebuttable presumption: if nonuse continues for three consecutive years, abandonment is presumed. This means the burden shifts to the trademark owner to produce evidence that, despite the nonuse, there was no intent to abandon. This is not an easy burden to meet once three years have elapsed without use.

“Use in commerce” is defined under 15 U.S.C. § 1127 as “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.” For goods, use requires that the mark be placed on the goods, their containers, displays associated with the goods, or the documents associated with the goods or their sale, and that the goods are sold or transported in commerce. For services, the mark must be used or displayed in the sale or advertising of the services, and the services must be rendered in commerce. A single token sale made solely to prevent abandonment — with no genuine commercial intent — does not constitute bona fide use in the ordinary course of trade.

The Three-Year Presumption: What It Means Practically

Three years of nonuse creates a statutory presumption of abandonment, but the presumption is rebuttable. The trademark owner must affirmatively demonstrate either: (1) that there was some minimal use during the three-year period that satisfies the statutory “use in commerce” standard, or (2) that the nonuse was excusable under the circumstances and there was no intent to abandon.

Courts have found that even a small number of genuine commercial transactions can satisfy the use requirement for certain product categories. In Rivard v. Linville, 133 F.3d 1446 (Fed. Cir. 1998), the Federal Circuit analyzed what constitutes bona fide use and emphasized that “token” use made solely to preserve trademark rights — without genuine commercial intent — does not qualify. The genuineness of the commercial activity matters. Selling a handful of units of a product at normal commercial prices to unrelated third parties, through ordinary channels of commerce, is more likely to qualify than selling to friends and family at nominal cost for the purpose of generating a receipt.

Excusable Nonuse: Legal Standards and Limitations

The USPTO’s excusable nonuse doctrine allows trademark owners to temporarily suspend use without triggering abandonment, provided the nonuse is justified by circumstances beyond the owner’s control and the owner maintains the intention to resume use. Excusable nonuse is not automatic — it must be formally claimed in the USPTO maintenance filings, and the USPTO will evaluate the explanation provided.

Accepted grounds for excusable nonuse have included government-ordered business shutdowns, trade embargoes that prevent commercial activity in the relevant market, factory retooling that is essential and temporary, natural disasters and catastrophic events, and serious illness of a sole proprietor where business cannot continue without that person’s involvement. The COVID-19 pandemic raised substantial excusable nonuse questions for businesses that were forced to close. The key legal factors are: (1) the circumstance was beyond the owner’s control, (2) the owner did not intend to abandon the mark, and (3) use will resume when the circumstance is resolved.

Circumstances that typically do not constitute excusable nonuse include voluntary business decisions to exit a market, lack of funding or business failure, and inability to compete effectively in the marketplace. The USPTO takes the position that business difficulties of a normal commercial kind do not excuse nonuse. If the decision not to use the mark is a business decision rather than an external compulsion, excusable nonuse will not apply.

Strategies for Maintaining Minimal Use

For trademark owners who want to preserve their rights during a period of reduced operations, the most reliable strategy is to create some genuine commercial use — however minimal — on a periodic basis. Consider:

• Making at least a small number of genuine sales of the trademarked goods to unrelated third parties at normal commercial prices, documented with invoices
• Maintaining the trademark on a functioning website that offers the goods or services for sale, with at least periodic actual sales being made
• Licensing the mark to a related company or licensee who continues to use it in commerce, with proper quality control provisions in place — use by an authorized licensee inures to the licensor’s benefit under 15 U.S.C. § 1055
• Documenting all use with dated photographs of the mark on goods, packaging, or displays, and retaining all sales records, invoices, and shipping documents

Impact of Abandonment on Third Parties and Registration

When a trademark is abandoned, the rights the registration provided expire. Third parties may begin using the same or similar mark without trademark infringement liability — though they cannot rely on a prior registration that has been canceled. A competitor who discovers that your mark has been abandoned can file for registration of the same or similar mark and, if they obtain registration, acquire priority rights that extinguish your ability to ever revive the mark without a legal challenge.

Third parties can also proactively seek cancellation of a registered trademark on abandonment grounds by filing a petition for cancellation with the USPTO Trademark Trial and Appeal Board (TTAB) under 15 U.S.C. § 1064. A successful cancellation eliminates the federal registration and all the legal benefits it provides. Defending a cancellation proceeding is expensive and resource-intensive. Prevention through maintained use is always the better strategy.

If your trademark is at risk of abandonment, or if you have questions about maintaining use during a period of reduced operations, contact the trademark attorneys at Revision Legal. We can help you assess your options and develop a strategy that preserves your rights.