A United States trade mark registration remains in full force and effect for a period of 10 years from the date of issuance. However, in order to maintain the registration, the trade mark owner must file a declaration of use between the fifth year and sixth year following the date of registration (or, with payment of a penalty, within six months thereafter). The declaration of use is a sworn statement by the trade mark owner indicating that the registered mark continues to be in use in the United States for each of the goods covered by the registration and includes a specimen showing use of the mark for the classifications. If the required declaration of use and the supporting specimens are not filed, the registration will be cancelled.

Trade mark owners commonly ask whether there is anything that they can do to maintain their registration if the registered mark is not in use at the time the declaration of use must be filed. Although US trade mark law seeks to remove unused marks from the Register, it does not seek to cancel registrations for marks not in use when it can be established in a sworn statement that such non-use is temporary and due to circumstances beyond the control of the trade mark owner. Therefore, under certain statutorily prescribed circumstances, the US Patent and Trademark Office (USPTO) allows for the maintenance of a trade mark registration where non-use is excusable.

Specifically, trade mark owners have the opportunity to argue that non-use is excusable. This argument consists of a sworn statement indicating: (1) that the owner has no intention to abandon the mark; (2) the date the mark was last used in commerce; (3) the approximate date that use of the mark is expected to resume; (4) the specific reasons for non-use which clearly demonstrate that non-use is due to some special circumstances beyond the owner's control; and (5) the specific steps being taken to put the mark back into use.

The key component of such a submission is the circumstances that have caused non-use. Examples of reasons for non-use that may be accepted by the USPTO include the sale of a business, illness, catastrophe, retooling of equipment necessary to manufacture the product and the repositioning of a brand.

Therefore, temporary non-use at the time that a trade mark registration must be maintained will not automatically result in cancellation of the registration. Accordingly, a trade mark owner would be best served to confer with US trade mark counsel to ascertain what options they have to maintain their registration if the mark is not in use at the time the declaration of use must be filed.

Karen Artz Ash and Bret J Danow

Katten Muchin Rosenman LLP
575 Madison Avenue
New York
New York 10022-2585
United States
Tel: +1 212 940 8554
Fax: +1 212 940 8671
karen.ash@kattenlaw.com
www.kattenlaw.com