37 C.F.R. §7.37. (Extract) Requirements for a complete affidavit or declaration of use in commerce or excusable nonuse; requirement for the submission of additional information, exhibits, affidavits or declarations, and specimens; and fee for deletions of goods, services, and/or classes from a registration.

1. (a) Requirements for a complete affidavit or declaration. A complete affidavit or declaration under section 71 of the Act must:

   . . .

2. (6) . . .
3. (ii) If the registered mark is not in use in commerce on or in connection with all the goods, services, or classes specified in the registration, set forth the date when such use of the mark in commerce stopped and the approximate date when such use is expected to resume; and recite facts to show that nonuse as to those goods, services, or classes is due to special circumstances that excuse the nonuse and is not due to an intention to abandon the mark[.]

The purpose of Trademark Act Section 71 is to remove from the register those registrations that have become deadwood. See Morehouse Mfg. Corp. v. J. Strickland & Co., 407 F.2d 881, 887-88 (C.C.P.A. 1969). It is not intended, however, to cancel registrations because of a temporary interruption in the use of the mark due to circumstances beyond the control of the holder of the registration. See In re Moorman Mfg. Co.,1979 Commr. Pat. LEXIS 75, at *4-5 (Comm’r Pats. 1979). Thus, if the mark is not in use in commerce but the holder believes the registration should not be cancelled, the holder may file an affidavit or declaration showing that nonuse is due to special circumstances that excuse the nonuse, and is not due to any intention to abandon the mark. 15 U.S.C. §1141k(b)(2); see Ex parte Kelley-How-Thomson Co., 1958 Commr. Pat. LEXIS 115, at *1-2 (Comm’r Pats. 1958).

Requirements for Affidavit or Declaration

Because Section 71(b)(2)(B) provides that the affidavit "shall . . . include a showing"―language that implies proof―merely stating that special circumstances exist and there is no intention to abandon the mark is not sufficient. See In re Conusa Corp., 1993 Commr. Pat. LEXIS 24, at *7 (Comm'r Pats. 1993); In re Moorman Mfg. Co., 1979 Commr. Pat. LEXIS 75, at *4-5; Ex parte Astra Pharm. Prods., Inc., 1958 Commr. Pat. LEXIS 132, at *2-3 (Comm’r Pats. 1958); Ex parte Denver Chem. Mfg. Co., 1958 Commr. Pat. LEXIS 131, at *2-3 (Comm’r Pats. 1958). "Sufficient facts must be set forth to demonstrate clearly that nonuse is due to some special circumstance beyond [the holder’s] control or ‘forced by outside causes.’" See In re Conusa Corp., 1993 Commr. Pat. LEXIS 24, at *7 (quoting In re Moorman Mfg. Co., 1979 Commr. Pat. LEXIS 75, at *5); see Ex parte Kelley-How-Thomson Co., 1958 Commr. Pat. LEXIS 115, at *2.

The affidavit or declaration must state when use in commerce stopped and give the approximate date when use is expected to resume. 37 C.F.R. §7.37(a)(6)(ii). If the holder was unable to commence use due to special circumstances beyond the holder’s control that excuse the nonuse, the holder should state that the mark was never in use and give the approximate date when use is expected to begin. Affidavits or declarations should also specify the reason for nonuse, the specific steps being taken to put the mark back in use, and any other relevant facts to support a finding of excusable nonuse.

The goods/services/classes for which excusable nonuse is claimed must be specified. See TMEP §§1613.09-1613.09(d) regarding proper specification of the goods/services/collective membership organization in a Section 71 affidavit or declaration.

In a multiple-class registration, there must be a recitation of facts as to nonuse for each class to which the affidavit or declaration pertains, or it must be clear that the facts recited apply to all the classes.

Presumption of Abandonment

If the mark has not been in use for three consecutive years, the USPTO may presume that the holder has abandoned the mark. 15 U.S.C. §1127; see Dragon Bleu (SARL) v. VENM, LLC, Opp. No. 91212231, 2014 TTAB LEXIS 352, at *19, *21-24 (2014) (citingImperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 1579-81 (Fed. Cir. 1990)); see also Learning Journey Int'l, LLC v. Yongfu, Can. No. 92082654, 2024 TTAB LEXIS 326, at *14-16 (2024); Vans, Inc. v. Branded, LLC, Can. No. 92066859, 2022 TTAB LEXIS 294, at *24-25 (2022); Double Coin Holdings Ltd. v. Tru Dev., Can. No. 92063808, 2019 TTAB LEXIS 347, at *33-34 (2019); Lewis Silkin LLP v. Firebrand LLC, Can. No. 92067378, 2018 TTAB LEXIS 436, at *10-11 (2018); Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., Can. No. 92056548, 2018 TTAB LEXIS 168, at *19 (2018).

Examples of Special Circumstances that Do and Do Not Excuse Nonuse

To demonstrate excusable nonuse, the holder must show that nonuse is due to special circumstances beyond the holder's control that excuse nonuse and not due to an intent to abandon the mark. 15 U.S.C. §1141k(b)(2)(B); 37 C.F.R. §7.37(a)(6)(ii); See In re Conusa Corp., 1993 Commr. Pat. LEXIS 24, at *7 (Comm'r Pats. 1993). The following examples provide general guidelines as to what is considered to be a special circumstance that excuses nonuse:

1. Business Decision. Nonuse related to a business decision is not beyond the holder’s control and does not excuse nonuse.
2. 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 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., 1993 Commr. Pat. LEXIS 24, at *7-8; In re Parmalat S.p.A., 1991 Commr. Pat. LEXIS 39, at *5-6 (Comm’r Pats. 1991); Ex parte Astra Pharm. Prods., Inc., 1958 Commr. Pat. LEXIS 132, at *2-3; Ex parte Denver Chem. Mfg. Co., 1958 Commr. Pat. LEXIS 131, at *2-3.
3. Trade Embargo or Other Circumstance Beyond Holder’s Control. Nonuse may be considered excusable where the holder 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.
4. Sale of a Business. Temporary nonuse due to the sale of a business may be considered excusable. However, a mere intention to sell the mark separate and apart from the ongoing business or existing goodwill does not establish an intent not to abandon the mark nor excuse nonuse. See Vans, Inc. v. Branded, LLC, Can. No. 92066859, 2022 TTAB LEXIS 294, at *76-77 (2022) (explaining that "an intent to sell a trademark separate and apart from any established goodwill in the mark is evidence of trafficking in trademarks" and does not demonstrate an intent to resume use that would rebut the presumption of respondent's intent not to resume use) (citing M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368, 1377-78 (Fed. Cir. 2015); Caesars World v. Milanian, 247 F. Supp.2d 1171, 1192 (D. Nev. 2003)).
5. 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 holder shows that the plant or equipment being retooled was essential to the production of the goods or rendering of services and that alternative equipment was unavailable on the market. See In re New Eng. Mutual Life Ins. Co., 1991 Commr. Pat. LEXIS 38, at *6-7 (Comm’r Pats. 1991).
6. 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.
7. Illness, Fire, and Other Catastrophes. Illness, fire, and other catastrophes may create situations of temporary nonuse, with the holder being able to outline arrangements and plans for resumption of use. Such nonuse is often excusable. However, a mere statement that the holder is ill and cannot conduct their business will not in itself excuse nonuse; the holder must show that the business is an operation that could not continue without the holder's presence. See In re New Eng. Mutual Life Ins. Co., 1991 Commr. Pat. LEXIS 38, at *5.
8. 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. See In re Parmalat S.p.A., 1991 Commr. Pat. LEXIS 39, at *6-7; In re Moorman Mfg. Co., 1979 Commr. Pat. LEXIS 75, at *5-6.
9. 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. See In re Conusa Corp., 1993 Commr. Pat. LEXIS 24, at *9.
10. 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. See Ex parte Kelley-How-Thomson Co., 1958 Commr. Pat. LEXIS 115, at *1-2.
11. 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. See In re Cont'l Distilling Corp., 254 F.2d 139, 139-41 (C.C.P.A. 1958).

Supplementary Evidence or Explanation of Nonuse

If the USPTO determines that the facts set forth do not establish excusable nonuse, the holder may file supplementary evidence or explanation, within the response period set forth in the Office action. If the affidavit or declaration included a claim of excusable nonuse when filed, no deficiency surcharge will be required for supplementing this claim with additional evidence or an explanation.

New Affidavit or Declaration Claiming Use

If there is time remaining in the statutory filing period (including the grace period) and the holder responds to the Office action by submitting a new affidavit or declaration with a claim of use, specimen, and filing fee, the USPTO will examine the new affidavit or declaration of use.