TMEP 1604.11 “Excusable Nonuse” of Mark

Extracted from 37 C.F.R. §2.161. A complete affidavit or declaration under section 8 of the Act must: . . .

(2) If the registered mark is not in use in commerce on or in connection with all the goods, services, or classes specified in the registration, set forth the date when such use of the mark in commerce stopped and the approximate date when such use is expected to resume; and recite facts to show that nonuse as to those goods, services, or classes is due to special circumstances that excuse the nonuse and is not due to an intention to abandon the mark[.]

The purpose of Section 8 of the Trademark Act is to remove from the register those registrations that have become deadwood.   See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 160 USPQ 715 (C.C.P.A. 1969) .  It is not intended, however, to cancel registrations because of a temporary interruption in the use of the mark due to circumstances beyond the control of the owner of the registration.   In re Moorman Mfg. Co.,203 USPQ 712 (Comm’r Pats. 1979).  Thus, if the mark is not in use in commerce but the owner believes the registration should not be cancelled, the owner may file an affidavit or declaration showing that nonuse is due to special circumstances that excuse the nonuse, and is not due to any intention to abandon the mark.  15 U.S.C. §1058(b)(2); Ex parte Kelley-How-Thomson Co., 118 USPQ 40 (Comm’r Pats. 1958).

Requirements for Affidavit or Declaration

Since "showing" implies proof, merely stating that special circumstances exist and there is no intention to abandon the mark is not sufficient.   In re Conusa Corp., 32 USPQ2d 1857 (Comm'r Pats. 1993); In re Moorman Mfg. Co., supra; Ex parte Astra Pharm. Prod., Inc., 118 USPQ 368 (Comm’r Pats. 1958); Ex parte Denver Chem. Mfg. Co., 118 USPQ 106 (Comm’r Pats. 1958).  The affidavit or declaration must state when use in commerce stopped and give the approximate date when use is expected to resume.  37 C.F.R. §2.161(f)(2).  If the mark was registered under §44(e) and the owner was unable to commence use due to special circumstances beyond the owner’s control that excuse the nonuse, the owner should state that the mark was never in use and give the approximate date when use is expected to begin. Affidavits or declarations should also specify the reason for nonuse, the specific steps being taken to put the mark back in use, and any other relevant facts to support a finding of excusable nonuse.

Sufficient facts must be set forth to demonstrate clearly that nonuse is due to some special circumstance beyond the owner's control or "forced by outside causes."   In re Conusa Corp., supra; In re Moorman Mfg. Co., supra; Ex parte Kelley-How-Thomson Co., Supra.

The goods/services/classes for which excusable nonuse is claimed must be specified.  See TMEP §§1604.09 et seq. regarding proper specification of the goods/services/collective membership organization in a §8 affidavit or declaration.

In a multiple-class registration, there must be a recitation of facts as to nonuse for each class to which the affidavit or declaration pertains, or it must be clear that the facts recited apply to all the classes.

Presumption of Abandonment

If the mark has not been in use for three consecutive years and the owner has done nothing to try to resume use of the mark, the USPTO may presume that the owner has abandoned the mark.  15 U.S.C.  §1127;  see Imperial Tobacco Ltd. v. Phillip Morris Inc., 899 F.2d 1575, 14 USPQ2d 1390 (Fed. Cir. 1990); Stromgren Supports Inc. v. Bike Athletic Co., 43 USPQ2d 1100 (TTAB 1997).


Examples of Special Circumstances that Do and Do Not Excuse Nonuse

In addition to a showing that there is no intention to abandon the mark, the owner must show that nonuse is due to special circumstances beyond the owner's control that excuse nonuse.  The following examples provide general guidelines as to what is considered to be a special circumstance that excuses nonuse:

Supplementary Evidence or Explanation of Nonuse

If the USPTO determines that the facts set forth do not establish excusable nonuse, the owner may file supplementary evidence or explanation, within the response period set forth in the Office action.  If the affidavit or declaration included a claim of excusable nonuse when filed, no deficiency surcharge will be required for supplementing this claim with additional evidence or an explanation.

New Affidavit or Declaration Claiming Use

If there is time remaining in the statutory filing period (including the grace period) and the owner responds to the Office action by submitting a new affidavit or declaration with a claim of use, specimen, and filing fee, the USPTO will examine the new affidavit or declaration of use.

Call 1-651-500-7590 or email for Responses to Office Actions; File or Defend an Opposition or Cancellation; Trademark Searches and Applications; Send or Respond to Cease and Desist Letters.

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