As the world continues to cope with the unprecedented scale of COVID-19, almost every aspect of the lives of American’s and those around the world has been affected. Here in the United States, the number of state and local governments issuing “stay-at-home” or similar orders continues to grow exponentially. Locally in Tampa, our situation is no different. Both Pinellas County on Wednesday and Hillsborough County just yesterday passed their own versions of “stay-at-home” orders. Under these orders, only residents who are classified as working in “essential services” will be allowed to report to work; while those in “non-essential” roles and industries will be closed for the foreseeable future. Typically, “essential services” include government, healthcare, public services, and sectors essential to national security; however, each particular order may adopt their own definition of “essential services.”

Trademark Renewals

While the closure of “non-essential” businesses may be worrisome for business owners financially, there may be added stress when it comes to their businesses’ intellectual property rights, which can be time-sensitive. For trademarks in particular, trademark owners are required to file what is known as a § 8 affidavit or declaration of use between the fifth (5) and sixth (6) years of registration and within the year before the end of every 10-year period after the date of registration. There is also a six (6) month “grace period” after the end of the deadlines above that is available with payment of a surcharge. A failure to file a timely § 8 affidavit or declaration may result in the loss of a businesses’ valuable trademark rights.

Special Circumstances may be Excused

However, both the Lanham Act and recent United States Patent and Trademark Office (USPTO) guidance has accounted for “special circumstances beyond the holder’s control that excuse nonuse” of a trademark. See TMEP § 1613.11. Essentially, if a trademark owner is unable to file a timely § 8 affidavit or declaration they may submit a during the same time period an affidavit or declaration showing excusable nonuse of the trademark in commerce. Under the Lanham Act, a affidavit or declaration of nonuse must state:

  1. when the use in commerce stopped,
  2. an approximate date when the use is expected to resume, and
  3. the reason for nonuse, including the specific steps being taken to put the mark in use and any other relevant facts to support a finding of excusable nonuse.

The chart below lists several common examples and whether those examples justifiable nonuse.

ExampleExcusable Non-Use?
Trade Embargo or Other Circumstance Beyond Holder’s ControlResellers of foreign-produced goods that cannot be imported currently due to pandemic may have an excusable non-use basis.
Illness, Fire, and Other CatastrophesYes, the USPTO has stated that the Coronavirus is “a extraordinary situation” and such nonuse would likely be excused
Examples and Nonuse with Respect to COVID19.

It is important to note that if your trademark is registered in multiple classes, a recitation of the facts for the excusable nonuse must be provided for each class or that the facts recited apply to all the classes.

Specific USPTO Coronavirus Guidance

Furthermore, the USPTO has taken steps to assist those impacted by the Coronavirus in particular. The USPTO has explicitly stated that it “considers the effects of the Coronavirus outbreak that began in approximately January 2020 to be an ‘extraordinary situation’ within the meaning of . . . 37 CFR § 2.146.

Additionally, the USPTO has taken the additional steps of waiving the petition fee to revive an abandoned application or reinstate a canceled/expired registration. However, when filing a “Petition to the Director,” the petition must be filed not later than two months of the issue date of the notice of abandonment or cancellation. Furthermore, if the excusable nonuse was due to the Coronavirus, in particular, the petition should include a statement explaining the situation surrounding the failure to respond and how it was related to the Coronavirus.