What Is Trademark Excusable Nonuse?


Excusable nonuse is an argument that is available when your trademark registration is canceled. Specifically, excusable nonuse is argued when a trademark registration is canceled for failure to file the necessary renewal Declarations by necessary deadlines.

It is, generally, the claim that you had a good reason for failing to file your renewal paperwork with the US Patent and Trademark Office (USPTO). It asks for forgiveness, essentially, on the basis that something outside of your immediate control caused you to miss the trademark renewal deadline.

However, not every excuse will be a good one, in the eyes of the USPTO. Excusable nonuse is the argument that your reason for blowing the required trademark renewal deadline was, in fact, reasonable.

What are the excusable nonuse bases, then, and what are not?

And what are the trademark renewal deadlines?

This Article will discuss excusable nonuse in terms of US Trademark Law, as well as the underlying requirements for renewal of a trademark registration.

Why Must a Trademark Registration Be Renewed?

Unlike copyright or patent registration, you can only own a trademark registration so long as you continue to use it in US commerce.

What does that mean?

Use in commerce is one of the most basic requirements for trademark registration in the US. It means that you must be using the mark in association with the sale or provision of a product or service to consumers. Further, that sale or provision must extend across state lines.

US Trademark Registration Is a Federal Legal Process

It is worth remembering that the Federal nature of the United States government means that (with a million exceptions) the Federal government only has jurisdiction over commercial activity that crosses state lines.

Otherwise, a product sold only in, say, the State of Michigan, is regulated by the Michigan State government. It is not regulated from Washington, DC. (Again, with a million exceptions to this rule!)

Thus, the USPTO only has jurisdiction to regulate and to grant the privileges of US trademark registration to those business names, product names, slogans, and logos used in commerce on an interstate basis.

The reason why a trademark must, then, be renewed lies in the word “trademark.” It is a “mark” (name, slogan, logo, color, sound, etc.) used in trade.

If you are not using the mark in trade, it is not a “trademark.” Its exclusive use cannot be granted to anyone by the USPTO in this case.

US Trademark Registration Is a Consumer Protection Measure

The underlying reason for all of this is that, unlike copyright and patent registration, US trademark registration is essentially a consumer protection measure.

The purpose of trademark registration is indeed to grant a company using it in commerce the exclusive right of use of the mark in relation to the sale of a product or service. However, the reason for granting that right is to ensure that consumers know what they are buying and from whom.

When you see the ® registered trademark symbol on a can of Coca Cola, you know it came from the Coca Cola Bottling Company of Atlanta, Georgia and not some guy filling cans with brown liquid in his Ann Arbor, Michigan garage.

If you don’t use your trademark in commerce, therefore, you lose it. You lose it because consumers have no interaction with it if it is not being used.

Recall the recent hullaballoo over Meghan Markle’s trademark registration application filed for the word “archetypes.” The media (especially in the UK) went bananas, claiming that Markle was attempting to stop anyone else from using this common English word.

This was nonsense, as our trademark attorney John Hilla explained in a major British publication, Woman and Home (link here). Markle filed her application for “archetypes” in relation to the provision of a podcast. Nothing more, nothing less. If her podcast never appears on air, her application will be rejected.

If she obtained her registration and then lost it for nonuse, Markle—and anyone else—would need to re-file or argue excusable nonuse.

What Are the Trademark Renewal Requirements?

At regular intervals, you must prove that you are still using the trademark in commerce. In fact, there are established deadlines for required trademark renewal filings.

They are as follows:

  • Section 8 Declaration:

Between the 5th and 6th year following the registration of your trademark, you must file renewal documentation with the USPTO. A “Specimen” evidencing your continuous use of the mark in relation to the products or services specified on your registration certificate must be attached.

  • Section 15 Declaration:

Likewise, at this same time, you can also file a “Section 15 Declaration” which makes the validity of your mark incontestable. This means that anyone, in the future, attempting to cancel your mark cannot do so on the grounds that the original registration was invalid for some reason.

  • Section 9 Declaration:

This Declaration must be filed in the 10th year after registration of a trademark. It must then be filed every 10 years after that—forever.

It is a statement of ongoing continuous use in commerce or the excusable nonuse of the trademark.

Each deadline carries a 6-month grace period before the trademark registration is canceled by the USPTO. However, additional filing fees apply within these grace periods.

Additionally, there are separate Declarations and Statements of Use that must be filed for trademarks registered in the US based on prior foreign registrations and applications apart from these, above.

Excusable Nonuse: Bad Reasons

So what isn’t excusable nonuse?

Excusable nonuse cannot be argued where your failure arises from:

  • A downturn in your business;
  • Loss of customer base or market-share;
  • Failure to operate your business at all;
  • Use in association with products or services other than those described on your trademark registration certificate;
  • Use in another country—but not in the United States.

There are a variety of available inexcusable nonuse reasons. A better question is likely to ask what the good excusable nonuse reasons may be.

Excusable Nonuse: Good Reasons

The acceptable bases for excusable nonuse generally imply circumstances outside of one’s control.

For example, a natural disaster, such as a fire, earthquake, or other external issue would constitute excusable nonuse.

Likewise, a US government trade embargo of a country in which a vital supplier or customer sits would likely constitute excusable nonuse.

The death of a principal of your company or an operations or other manager who is crucial to the ongoing business and use of the trademark might arguably constitute excusable nonuse, also.

The need to retool a factory, purchase new equipment, or otherwise repair some interruptive mechanism enabling your use of the trademark could also constitute excusable nonuse.

A pending sale of the business and an interruption in use while the negotiation and purchase and sale agreements are concluded, as well as the transfer of assets, would also constitute excusable nonuse. (This would also necessitate the need for an assignment of the trademark registration as well.)

Trademark Renewal and Excusable Nonuse: The Bottom Line

The bottom line here is that you never want to be in the position of needing to argue excusable nonuse in the first place.

It is far better to be mindful of the need for renewal of a trademark registration, as well as the related deadlines.

The retainer of an experienced Michigan trademark attorney will go a long way toward ensuring that you do not miss crucial trademark renewal deadlines. An attorney in the daily business of managing trademark portfolios will have docketing systems in place to avoid missed deadlines and to warn clients will in advance of the need for documentation.

In short, there is no excuse for the need to argue excusable nonuse.

Noble Path Trademark Law is a boutique US law practice located in Metro Detroit and assisting entrepreneurs, solopreneurs, artists, musicians, start-ups, and larger enterprises with robust intellectual property portfolios, and others in all industries with trademark registration, trademark renewal, trademark monitoring, and Office Action refusal response matters.

We offer virtual consultations, premium customer service, and the expertise you need to maximize your odds of trademark registration success.

Click the “Register Your Trademark” button below to schedule your initial consultation and to begin your brand protection journey.