The outbreak of the novel Coronavirus (“COVID-19”) has led to the shuttering of businesses throughout the world. While many of these businesses will be able to open when it is deemed safe by authorities for them to do so, others will be forced to close down forever. For struggling businesses that have registered and/or common law trademarks, it is important to be aware of their trademark rights, and how those rights may unnecessarily become abandoned in these difficult times. A seasoned trademark lawyer can help advise businesses on their trademark rights and the legal issues surrounding abandonment in this unfortunate climate.
What constitutes abandonment of trademark rights?
A trademark is a word, phrase, symbol, or design, or a combination thereof, that identifies and distinguishes the source of goods/services. Prior to federal registration, common law trademark rights vest in the geographic area that the particular trademark is used in. In order for businesses to maintain their trademark rights, they must demonstrate ongoing and continuous usage of their marks in commerce. Failing to exhibit ongoing and continuous use of a mark can result in the abandonment of trademark rights.
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Failure to use a mark in commerce can result in abandonment of trademark rights, resulting in loss of an existing registration. Abandonment of trademark rights is evaluated based on intent. Federal law defines abandonment as when “use has been discontinued an intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment.” Case law provides that planning to resume use must be within “a reasonable time” or within “the reasonably foreseeable future” determined based upon the industry that the mark is used in. In this uncertain time, most business closures are involuntary, meaning that intent to discontinue use of many marks is probably not intentional. Such non-use may be due to “special circumstances” that the United States Patent and Trademark Office (“USPTO”) may entertain as beyond the control of the owner in association with evaluating Section 8 affidavit of continued use filings. Applying this standard, courts have deemed that eight years was reasonable for the continued protection of the CRASH DUMMIES mark and even up to fifteen years for Ferrari’s SPYDER mark.
Abandonment can also occur when applicants, registrants and parties to Trademark Trial and Appeal Board (“TTAB”) proceedings fail to meet administrative deadlines applicable to their respective trademarks. To relieve some of the pressure related to meeting these deadlines, under the Coronavirus Aid, Relief, and Economic Security Act (“CARES Act”), Congress has given the USPTO the authority to “toll, waive, adjust, or modify, any timing deadline established by the Trademark Act.” The USPTO has used this authority to extend most deadlines due between March 27, 2020, and April 30, 2020, for an additional thirty days from the initial due date, provided that a statement is made with the subject filing that the delay was related to the COVID-19 pandemic.
Trademark Lawyer Guidance
Trademark rights may not be at the forefront of businesses’ respective agendas while trying to survive during the COVID-19 pandemic. However, these intellectual property rights should be an area of concern that businesses keep on their radar.
If you are interested in learning more about trademark law, or if you are involved in a trademark law dispute, please email us at firstname.lastname@example.org, or call us at (212) 246-0900.
The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the legal advice of an experienced attorney.
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