Note: A Section 71 Declaration of Excusable Nonuse is for registrations of extensions of protection under the Madrid Protocol. If you filed a national application directly with the USPTO and not through the Madrid Protocol, you would file a Section 8 Declaration of Excusable Nonuse.
In some limited cases, if the mark is not in use in commerce for some or all of the goods/services, a Declaration of Excusable Nonuse can be filed. If the mark is not currently being used on all of the identified goods/services, and it is expected that use will resume, you must recite facts to show that nonuse as to those goods or services is due to special circumstances that excuse the nonuse, and is NOT due to an intention to abandon the mark; also, you must set forth the date when use of the mark in commerce stopped and the approximate date when use is expected to resume.
Special circumstances excusing the nonuse must be beyond the owner’s control and are limited in nature. The following examples provide general guidelines as to what is considered to be a special circumstance that excuses nonuse:
Nonuse related to a business decision is not beyond the owner’s control and does not excuse nonuse.
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 requirement for an affidavit or declaration of use or excusable nonuse is to eliminate registrations of marks that are not in use due to ordinary changes in social or economic conditions. See In re Conusa Corp., supra; In re Parmalat S.p.A., 32 USPQ2d 1860 (Comm’r Pats. 1991); Ex parte Astra Pharm. Prod., Inc., supra; Ex parte Denver Chem. Mfg. Co., supra.
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 may be considered excusable.
he 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. In re New Eng. Mutual Life Ins. Co., 33 USPQ2d 1532 (Comm’r Pats. 1991).
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 U.S. 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. In re Cont'l Distilling Corp., 254 F.2d 139, 117 USPQ 300 (C.C.P.A. 1958).