If you are a trademark owner whose registration has a maintenance filing due this year, it is possible that you have experienced some form of disruption in your business due to personal matters or public health regulations. If you have stopped using your trademark with some or all of the goods or services listed in the registration, it is imperative that you either delete those items or seek to be excused from non-use when you file your Section 8 or Section 71 Declaration of Continued Use or Excusable Nonuse.

Deleting Goods and Services

Deleting goods and services from your registration is easy: You can delete items you no longer sell in commerce even before your maintenance filing becomes due by filing a Section 7 Request for Amendment or Correction of Registration Certificate. You are required to use this document to timely notify the USPTO and the public of any changes to the registration. You can also delete inaccurate entries in the registration certificate at the time you prepare your Section 8 or Section 71 declaration. Both of these methods are free of charge for trademark owners in order to keep the process of maintaining the integrity of the register fair and uncomplicated.

Excusable Nonuse

Registrant entities that are currently not engaged in the sale of certain or all of their products or services have the option to request to be excused from non-use of their marks with regards to those items in their declarations under Sections 8 or 71 only if they can show proof of the following: circumstances beyond their control being the cause of the disruption and absence of intention to abandon the marks.

Keep in mind that not all business closures during the COVID-19 pandemic may be excusable. The current health crisis has exacerbated some trends already existing in the economy and eliminated the need for some goods and services due to changed social and economic conditions. Furthermore, be aware that personal illness is also not always a valid excuse for non-use unless it is shown that the business cannot continue without the presence of the owner.

The Mantra

It is important for trademark owners to remember that being truthful in their maintenance filings is a legal obligation that protects not only their own interests, but also those of the public who rely on the accuracy of the federal register. The penalties for submitting false information can be monetary as fees per class are charged for deleting items on which the mark is not being used during an audit or after the declarations have been submitted. Inaccurate statements in the maintenance documents also expose a registration to third-party challenges and jeopardize its validity.