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Trademarks in the Time of Covid-19: Five Things Trademark Owners Should Do Right Now

By John DiGiacomo

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.

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 or give us a call at 855-473-8474.

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