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Bill Attorney
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Category: Intellectual Property Law
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Trademark was originally registered as being used in

Customer Question

Trademark was originally registered as being used in commerce but I have since stopped selling items. I want to keep my trademark active. I'm currently up for my 6-yr section 8 and I'm not sure how to file since the Mark is no longer being used. Thank you.
Submitted: 19 days ago.
Category: Intellectual Property Law
Expert:  Bill Attorney replied 19 days ago.
Attorney Bill assisting you today.
You do need to keep a trademark active and in use to maintain your trademark and under section 8 you need to file a declaration.
There is a presumption of abandonment of the mark if you haven't used it for 3 years; otherwise you can file a declaration of excusable non use for certain business related difficulties.
The law is based on the 1604.11 of the examinership manual :
"Requirements for Affidavit or Declaration
Because Section 8(b)(2)(B) of the Trademark Act 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. In re Conusa Corp., 32 USPQ2d 1857 (Comm'r Pats. 1993); In re Moorman Mfg. Co., supra; Ex parte Astra Pharm. Prod., Inc., 118 USPQ 368 (Comm’r Pats. 1958); Ex parte Denver Chem. Mfg. Co., 118 USPQ 106 (Comm'r Pats. 1958). Sufficient facts must be set forth to demonstrate clearly that nonuse is due to some special circumstance beyond the owner’s control or "forced by outside causes." In re Conusa Corp., supra; In re Moorman Mfg. Co., supra; Ex parte Kelley-How-Thomson Co., supra.
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. §2.161(f)(2). If the mark was registered under §44(e) and the owner was unable to commence use due to special circumstances beyond the owner’s control that excuse the nonuse, the owner 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 §§1604.09 et seq. regarding proper specification of the goods/services/collective membership organization in a §8 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.
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Expert:  Bill Attorney replied 16 days ago.
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