A trademark excusable nonuse claim lets you keep a registration alive during a gap in use, but only if something outside your control caused the gap and you can show real steps toward putting the mark back in commerce. You make the claim inside your Section 8 declaration (or Section 71, for Madrid Protocol registrations), and a stated intention to resume selling, standing alone, will not carry it.
The Two-Part Test
Federal law treats a mark as abandoned when use has been discontinued with an intent not to resume, and three consecutive years of nonuse is prima facie evidence of abandonment.1Office of the Law Revision Counsel. 15 USC 1127 – Construction and Definitions To keep the registration despite the gap, 15 U.S.C. § 1058 requires you to prove two things: the nonuse was caused by special circumstances that excuse it, and the nonuse does not reflect any intention to abandon the mark.2Office of the Law Revision Counsel. 15 USC 1058 – Duration, Affidavits and Fees
Both halves have to land. The circumstances must be beyond your control, and you have to point to concrete, objective steps toward resuming use. Saying you plan to start selling again is not enough on its own.
What Counts as Special Circumstances
The USPTO’s Trademark Manual of Examining Procedure sets out the situations examiners accept. The common thread is that an outside force interrupted the business and a realistic path back to commercial use exists.
Government Action and Regulatory Delay
A trade embargo or other government prohibition that blocks the mark from entering U.S. commerce is the cleanest case. Regulatory waiting periods also qualify. A pharmaceutical company holding a mark for a drug that is stuck in FDA review can claim excusable nonuse for the review period, as long as it documents the application status and its efforts to move it forward.
The USPTO applied this category to COVID-19 disruptions and told affected owners exactly what to include: how the pandemic caused the stoppage, the last-use date, the steps being taken to resume, and a target resumption date.3United States Patent and Trademark Office. Maintenance Filings, COVID-19, and Excusable Nonuse
Fires, Disasters, and Illness
A factory fire, natural disaster, or similar catastrophe that physically prevents production can excuse nonuse if you can lay out arrangements and a timeline for restarting. Owner illness may qualify, but only if the business genuinely cannot continue without your direct involvement. A hospitalized sole proprietor has a much stronger case than a company with staff who could keep operating.
Retooling shutdowns can also work, but the standard is narrow. You need to show the equipment being replaced was essential to producing the goods and that no alternative equipment was available. Voluntary modernization, where the old equipment could have kept running, does not clear the bar.
Sale of the Business and Slow-Production Goods
A short gap during the sale of a business can be excusable if it is genuinely temporary and both sides are moving toward closing. For products that inherently take a long time to make, such as aircraft or custom industrial equipment, having orders on hand and actively working to fill them can excuse a stretch where no finished goods bearing the mark are in the marketplace.
What Doesn’t Qualify
Most rejected claims fail here. The following situations are not special circumstances, no matter how understandable they are commercially:
- Business decisions to pause a product line, shift strategy, or pivot to a different market. Those are voluntary acts within your control.
- Decreased demand. The market’s behavior is not the kind of external force the statute contemplates.
- Negotiations with distributors. Looking for new partners can help show you haven’t abandoned the mark, but it doesn’t establish that anything forced the nonuse.
- Foreign use only. What matters is use in commerce that Congress can regulate; sales abroad don’t fill the gap.
- Use on different goods or services. If your registration covers shoes and you’re only using the mark on handbags, the shoes are still in nonuse.
The line is control. If you could have kept using the mark but chose not to for business reasons, the nonuse is not excusable, however sensible the decision was.
How to File the Claim
You raise excusable nonuse inside the Section 8 Declaration of Use that every registrant must file to maintain a registration. Missing the filing itself, on any grounds, cancels the registration.2Office of the Law Revision Counsel. 15 USC 1058 – Duration, Affidavits and Fees
Deadlines
The first Section 8 declaration is due during the one-year window before the sixth anniversary of registration. A mark registered on March 1, 2021, has a window running from March 1, 2026, through March 1, 2027. After that, a combined Section 8 declaration and Section 9 renewal is due during the one-year window before each tenth anniversary of registration, and every ten years after.4United States Patent and Trademark Office. Registration Maintenance/Renewal/Correction Forms
If you miss the regular window, there is a six-month grace period with a $100 per class surcharge on top of the filing fee.2Office of the Law Revision Counsel. 15 USC 1058 – Duration, Affidavits and Fees Miss the grace period and the registration is cancelled with no way to revive it.
What to Include
When claiming excusable nonuse for some or all of the goods and services, your declaration must identify which goods or services are not in use, the date the mark was last used in commerce, the approximate date use is expected to resume, a detailed explanation of the special circumstances, and the specific steps being taken to resume use.5United States Patent and Trademark Office. Definitions for Maintaining a Trademark Registration
Documentation carries the claim. Contracts for replacement equipment, copies of regulatory filings, insurance claims tied to a disaster, and correspondence with government agencies all show the nonuse is genuinely temporary and beyond your control.
Fees
The Section 8 filing fee is $325 per class of goods or services. The grace-period surcharge is another $100 per class.6United States Patent and Trademark Office. USPTO Fee Schedule The same fees apply whether you’re claiming active use or excusable nonuse.
Madrid Protocol Registrations
If your U.S. registration came through the Madrid Protocol, you file a Section 71 declaration instead of a Section 8. The information required, the windows, and the excusable nonuse standard are identical. Failing to file cancels the U.S. registration and invalidates the international registration’s protection in the United States.5United States Patent and Trademark Office. Definitions for Maintaining a Trademark Registration
If the USPTO Pushes Back
An examining attorney who finds a problem with the claim issues an office action. It may ask for more evidence, challenge whether the stated circumstances qualify, or find the claim insufficient on its face.
You have three months from a nonfinal office action to respond through the TEAS Response to Office Action form, with an optional three-month extension available for a fee. If your response doesn’t resolve the issue, a final office action follows, also with a three-month deadline (again extendable by three months for a fee). Responses to final office actions use the TEAS Request for Reconsideration after Final Action form.7United States Patent and Trademark Office. Responding to Office Actions
If reconsideration fails, you can appeal to the Trademark Trial and Appeal Board.7United States Patent and Trademark Office. Responding to Office Actions Every deadline in this chain is enforced; missing one deletes the goods or services or cancels the registration outright.
Acceptance Isn’t the End
Even after the USPTO accepts your declaration, the registration can be selected for a post-registration audit, and audited owners must submit additional proof of use for specific goods or services the examiner identifies.8United States Patent and Trademark Office. Post Registration Audit Program
Directed audits are triggered when something in the file raises doubts about genuine use, such as specimens that appear digitally altered or that trace back to specimen-farm websites. If you can’t provide proof of use for the audited items, they are deleted from the registration. The deletion fee is $250 per class each time goods or services are removed, and a $100 deficiency surcharge may also apply. No response at all cancels the entire registration.8United States Patent and Trademark Office. Post Registration Audit Program