Not using your trademark? Then say "Good Bye" to it!

Here in the United States you must use your mark in commerce else it will be considered abandoned and your competitors may seek to have it cancelled.  The reason for this is that trademark law serves to protect consumers and marks that appear and then reappear in commerce is confusing to the consumer and also prevents other businesses who may want to make more effective use of the mark from doing so thus harming the interests of consumers.  This stands in contrast to other forms of intellectual property law such as patents and copyrights which serves more to protect the creator of the patent or copyright.  

So you may be asking how long can you not use your mark in commerce before you run the risk of losing it?  15 USC 1127 holds that a mark shall be deemed to be abandoned if its use has been discontinued with intent not to resume such use and that intent not to resume use is inferred after three consecutive years of nonuse.  So your risk begins immediately when you stop using the mark in commerce but initially there is little to worry about as it is difficult for someone to prove that you no longer have intent to use the mark in commerce.  However, as time of nonuse increases, the risk grows and at the third anniversary of nonuse it is presumed that you no longer have the intent to use the mark in commerce.

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Is there an exception to this rule?  The answer is no.  If you have not been using your mark in commerce you will risk losing it, especially after three years of nonuse, unless you can show an intent to resume use of the mark. So how can you show an intent to resume?  For starters you cannot just waltz into the trademark office and tell them that you intend to resume use.  The trademark office places a rather high bar on showing an intent to resume use and requires that the nonuse is due to special circumstances beyond the trademark owner’s control.  The Trademark Manual of Examining Procedure 1604 gives the following examples as a general guidelines as to what is considered to be a special circumstance that excuses nonuse where circumstances that are likely to prove nonuse in green while circumstances likely not to prove nonuse in red:

• Business Decision. Nonuse related to a business decision is not beyond the owner’s control and does not excuse nonuse.
• Decreased Demand. Decreased demand for the product sold under the mark, resulting in its discontinuance for an indefinite period, does not excuse nonuse. The purpose of the affidavit requirement is to eliminate registrations of marks that are in nonuse due to ordinary changes in social or economic conditions.
• Trade Embargo or Other Circumstance Beyond Owner’s Control. Nonuse may be considered excusable where the owner of the registration is willing and able to continue use of the mark in commerce, but is unable to do so due to a trade embargo.
• Sale of a Business. Temporary nonuse due to the sale of a business might be considered excusable.
• Retooling. The mark might be out of use temporarily because of an interruption of production for retooling of a plant or equipment, with production possible again at a scheduled time. However, nonuse due to retooling is excusable only if the owner shows that the plant or equipment being retooled was essential to the production of the goods and that alternative equipment was unavailable on the market.
• Orders on Hand. If the product is of a type that cannot be produced quickly or in large numbers (e.g., airplanes), yet there are orders on hand and activity toward filling them, nonuse might be considered excusable.
• Illness, Fire, and Other Catastrophes. Illness, fire, and other catastrophes may create situations of temporary nonuse, with the owner being able to outline arrangements and plans for resumption of use. Such nonuse is often excusable. However, a mere statement that the owner is ill and cannot conduct his or her business will not in itself excuse nonuse; the owner must show that the business is an operation that could not continue without his or her presence.
• Negotiations with Distributors. A recitation of efforts to negotiate agreements that would allow for resumption of use of the mark, or a statement that samples of the goods have been shipped to potential distributors, may establish lack of intention to abandon the mark, but does not establish the existence of special circumstances that excuse the nonuse.
• Use in Foreign Country. Use of the mark in a foreign country has no bearing on excusable nonuse of a mark in commerce that can be regulated by the United States Congress.
• Use of Mark on Different Goods/Services. Use of the mark on goods/services other than those recited in the registration does not establish either special circumstances or lack of intention to abandon the mark.
• Use of Mark in Another Form. Use of a mark as an essential part of a materially different composite mark does not excuse the failure to use the mark at issue.

​If you have not been using your mark in commerce yet you wish to keep your mark I suggest contacting a trademark attorney such as myself to help you argue that your special circumstances are sufficient to defend your mark from being cancelled.