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Protecting Your Trademark During Temporary Business Closure

For trademark users and registrants, a temporary shutdown of a business should not cause abandonment of a trademark if proper steps are taken. Generally, to renew a trademark a registrant must declare that the mark is currently in use at the time of filing. Registrants who have closed their business or stopped producing products due to the COVID-19 pandemic and related government orders have a way to keep registrations active. Rather than make a false statement during a time of temporary nonuse, the rules of the U.S. Patent and Trademark Office (PTO) allow the registrant to describe the reasons for a temporary hiatus and the plans being made to resume use. It is likely the PTO will accept reasons of government-ordered shutdowns a valid excuse for temporary nonuse.

To support statements made to the PTO about intention to continue use, and to maintain the strength of unregistered trademarks, any trademark owner who must close the business temporarily should preserve trademark rights by creating evidence that the operations, and use of the brand, will continue. Trademark rights depend on use of a trademark in commerce. When brands are no longer used, they are considered abandoned and the owner cannot stop otherwise infringing uses. While the law presumes that abandonment occurs only after three years of nonuse, it is prudent to take steps to avoid a claim that a mark has been abandoned. Abandonment relates to the mindset of the purveyor, so it is helpful to create a statement from a company official declaring that any cessation of business, sale of products or use of the brand is temporary and use will resume. Creating this evidence occasionally and keeping the statements in the business’ file will help.

Ned Himmelrich
410-576-4171 nhimmelrich@gfrlaw.com

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