Excusable Nonuse of a Registered Trademark

hourglass with red sand on newspaper, registered trademark excusable nonuse

There are few more important, or more misunderstood, aspects of law than intellectual property (IP). More misconceptions exist around things like registered trademarks, fair use and excusable nonuse than almost any other legal concept.

Especially now, in the age of the internet, knowing your rights as an IP owner is paramount. Piracy and breach of trademarks are easier than ever. It’s important to make sure you understand the laws around intellectual property, so that you can properly protect yourself.

Nonuse of a registered trademark is one of the more common issues IP holders encounter. There are some exemptions to it, however. Read on to learn when trademark nonuse is acceptable.

What Is Nonuse?

An understanding of nonuse, also called trademark abandonment, is vital for every intellectual property owner. However, to understand nonuse, you must first understand continuous use. Essentially, when a trademark sees continuous use in commerce for five years, it becomes incontestable. This means that no third-party can challenge the validity of the trademark.

Should you interrupt this continuous use at any point during the five-year period, then the clock would reset. A trademark would be able to become incontestable, but it would have to start over and go through five years of uninterrupted use.

Trademark abandonment occurs when the owner of the trademark intentionally ceases to use the trademark for three or more years. Once abandoned, the owner may no longer claim rights to the trademark. This effectively frees the trademark so that anyone else can use it without recourse from the original owner.

What Constitutes Excusable Nonuse of Registered Trademarks

On paper, there are no real exemptions to this requirement. If continuous use ceases for any reason or length of time, the trademark has to go through another five years uninterrupted. If it achieves this, then it can become an incontestable trademark.

The only exception is when the cause of the interruption is completely outside of the trademark holder’s control. In that case, it is possible for periods of nonuse to be excused. In that case, your trademark is guarded against claims of abandonment.

However, this exception does not allow you to claim continuous use. Regardless of the reason, any nonuse of trademark breaks the five-year period required for incontestability.

Nonuse Due to Coronavirus

This has become an important topic of debate since the outbreak of COVID-19. The pandemic has opened new questions about acceptable nonuse due to the pandemic.

COVID has opened the door to a variety of short-term changes and exemptions, including several extensions on things like trademark filing.

Still, this is an unprecedented situation, and nothing can be taken for granted. Dealing with trademark and nonuse during the pandemic requires a lot of time and knowledge. For this reason, it’s important to consult a trained intellectual property lawyer, who can help answer your questions and explain the intricacies of the law.

Seek Legal Assistance in Filing a Declaration of Excusable Nonuse

When a registered trademark owner qualifies for excusable nonuse, it is vital to take action prior to the deadline. The seasoned intellectual property (IP) attorneys at Boyer Law Firm stand ready to protect your IP assets. Contact us today to assist you in filing a declaration of excusable nonuse to The United States Patent and Trademark Office (USPTO).

Find Legal Information Today

Exceptions to nonuse laws are few and far between. But in these unprecedented times of illness and quarantine, new precedents are being set every day. There are some exceptions and extensions being provided with regards to trademark and intellectual property law.

Whether you’re a seasoned owner of several intellectual properties, or you’re filing for your first trademark, it’s important to know the laws around the situation. Our blog has plenty of information. And if you have any other legal questions you need answered, don’t hesitate to contact us – our team will be happy to help.