The coronavirus pandemic has caused unexpected interruptions for many businesses, including some complete shutdowns. Some businesses have had to suspend certain business activities in order to maintain business integrity and to help keep their employees and customers safe. This means that businesses may have had to stop using their trademarks in commerce. Is your trademark at risk because you shut down for Coronavirus?

In the United States, trademark rights are directly tied to the active and continuous use of the trademark in commerce. If a trademark owner stops using their mark, they may face claims that their mark was abandoned and potentially lose their rights. So what happens if you can’t use your trademark right now?

The United States Patent and Trademark Office (USPTO) issued guidance that it considers the Covid-19 pandemic an “extraordinary situation” as it relates to trademarks and patents. This designation allows the USPTO to provide some relief as to trademark filings, including some fee waivers for missed deadlines during this time. Also, the non-use of a trademark due to the pandemic because of compliance with State executive orders, problems with supply chains, compliance with the CDC guidelines, or other related reasons may be considered “excusable non-use” under trademark law.

What is Excusable Non-Use?

Excusable non-use is an interruption in the continuous use of a trademark due to circumstances outside of the owner’s control, such as a pandemic. Excusable non-use is an exception to the rule that a trademark must be used continuously in order to maintain a trademark registration. Excusable non-use will be determined on a case-by-case basis. If a trademark owner wishes to claim excusable non-use, they will have to file an Affidavit with the USPTO specifying the reasons for non-use, the specific steps being taken to use the mark, and all other supporting facts.

What should Trademark owners do during the Pandemic?

• USE YOUR TRADEMARK IF YOU CAN. Excusable non-use will not be automatically granted because of the pandemic. While your business activities may have changed because of the pandemic, it is important that you continue to use your trademarks wherever and whenever possible. Excusable non-use should only be a back-up plan and only relied upon if continued use of the trademark is impossible.
• DOCUMENT YOUR ACTIVITIES. If continued use of your trademark on your goods and services is impossible, keep notes about when your use temporarily ended and how you’ve attempted to continue to use it. Also, make a plan for how you can use the mark again.
• FIND ALTERNATIVE USES. Even if you can’t sell your products and services right now, ventures such as continuing to put content on your website and social media, engaging in promotional activities for your brand, and planning for re-entry into the marketplace are all ways that you can keep consumers seeing your trademark in the marketplace.
• MONITOR FOR INFRINGEMENT. During this time, infringers may take advantage of the disruptions in the market and business activities to steal and misuse other’s Intellectual Property. Catching infringement early can help your business avoid damages.
• KEEP UP WITH YOUR FILINGS. The USPTO is still operating and all filing deadlines remain the same. If you have a filing deadline coming up, you should plan on meeting it.

Trademark Abandonment: The Legal Standard

Trademark abandonment is a serious risk for any business that ceases use of its mark, whether due to a pandemic or any other reason. Under the Lanham Act, a mark is deemed abandoned when “its use has been discontinued with intent to abandon.” 15 U.S.C. § 1127. The statute creates a rebuttable presumption of abandonment after three consecutive years of non-use. This means that if a competitor or the USPTO can show three years of non-use, the burden shifts to the trademark owner to demonstrate either that use continued or that any non-use was excusable.

Intent to abandon need not be shown explicitly. Courts may infer intent from the circumstances, including the duration of non-use and the trademark owner’s actions during that period. An owner who ceases use, makes no effort to resume use, and takes no steps to preserve their rights is at serious risk of losing a trademark cancellation proceeding based on abandonment, even if the initial cessation of use was involuntary.

By contrast, excusable non-use can defeat an abandonment claim even where non-use exceeds three years. Courts have recognized excusable non-use in a variety of circumstances, including government-mandated shutdowns, supply chain disruptions, and force majeure events. The key is that the trademark owner must actively document and demonstrate the reasons for non-use and their ongoing intention to resume use.

Maintaining Your Trademark Registration During Disruptions

Even when business operations are disrupted, trademark owners must attend to their USPTO filings. Specific maintenance filings are required at set intervals to keep a registration active. Between the fifth and sixth year after registration, the owner must file a Declaration of Use (Section 8 Affidavit) along with a specimen showing the mark in current use. At the ten-year anniversary, the owner must file a combined Section 8 and Section 9 renewal.

Missing these deadlines can result in the cancellation of the trademark registration. The USPTO provides a six-month grace period for late filings with an additional fee, but there is no exception for pandemic-related delays unless the USPTO has specifically designated the situation as an “extraordinary circumstance” and provided formal relief. During COVID-19, the USPTO did extend certain deadlines, but those extensions were temporary and specific. Going forward, trademark owners should treat all USPTO deadlines as firm and plan accordingly.

Protecting Your Trademark From Opportunistic Infringers

Business disruptions create opportunities for bad actors. A competitor who learns that a well-known mark has fallen into non-use may attempt to register a similar mark, or may begin using an identical or confusingly similar mark in the marketplace. A third party monitoring service or an experienced trademark attorney can alert you to new trademark applications that conflict with your mark, allowing you to file an opposition with the Trademark Trial and Appeal Board (TTAB) during the 30-day publication period.

Additionally, disruptions in normal business operations can make it harder to police infringement. Trademark owners who redirect attention and resources to operational survival may fail to notice infringers exploiting their brand in the marketplace. Counterfeiters and infringers are keenly aware of moments of inattention. A robust trademark monitoring program — even a basic one — can catch early-stage infringement before it takes root.

Long-Term Trademark Strategy After a Crisis

Once business operations have stabilized, trademark owners should conduct a comprehensive audit of their trademark portfolios. This means confirming that all registrations are current and in good standing, reviewing whether any marks are at risk from non-use, evaluating whether new products or services introduced during the crisis need trademark protection, and assessing the competitive landscape for new infringement risks.

A crisis is also an opportunity to strengthen trademark rights. If a mark has been used in new channels — online, delivery, curbside — documenting those uses can support future declarations of use. If the business has pivoted to new goods or services, filing new trademark applications ensures those expansions are protected.

If you are unsure of how to keep your trademark in use, how to respond to an upcoming USPTO filing deadline, need to stop an infringer, or have any other trademark questions, our Trademark Lawyers are available to help. Please contact us through our website www.revisionlegal.com or give us a call at 855-473-8474.