by Edward R. Williams and John P. Dyro, Associate
Every jurisdiction has its own rules and regulations governing the registration and maintenance of trademarks. These include varying requirements regarding how often a trademark must be used to maintain a registration for the mark. The consequences of not following a jurisdiction’s use requirements often include loss of the ability to enforce that mark. Some jurisdictions also require mark owners to file regular statements of use or risk having their mark automatically canceled. This article lays out the key use requirements for a number of jurisdictions, including the United States.
While a mark may be registered internationally through the Madrid system, and therefore capable of being renewed in multiple jurisdictions at once via that system, trademark owners should be aware of the jurisdiction-specific requirements for maintaining registration of their mark, which are supplemental to the renewal requirements of the Madrid system.
United States: A registered mark in the United States is vulnerable to attack on the grounds of non-use. Three or more years of non-use in the United States constitutes prima facie evidence of abandonment, which shifts the burden to the trademark owner to prove there is an intention to resume use of the mark. Use must be on a commercial scale, which is normally characterized as use in the ordinary course of trade. Any interested third party or the United States Patent and Trademark Office (USPTO) may bring an action for non-use. Non-use may be excused if it is due to import restrictions, other government policies, or acts of God. Resumption of use after three years or more of non-use may cure non-use provided that, in the interim, no third party has brought an action for cancellation of the trademark registration on the grounds of non-use.
In order to maintain a trademark registration, a trademark owner must submit to the USPTO a declaration (Sections 8 and 15) stating that the mark is in use between the fifth and sixth years after the registration issues. To renew a trademark registration thereafter, a declaration of use (Sections 8 and 9) is due every ten years from the issuance of the registration. Failure to file these declarations will result in the cancellation of the registration. Both the five-to-six year declaration (Sections 8 and 15) and the 10-year declaration (Sections 8 and 9) require specimens showing current use of the mark on the goods or services for which it is registered.
Andrus Intellectual Property Law will docket these dates and deadlines to ensure that your trademark registration is maintained. However, to maintain the registered rights it is important for the client to use the trademark as shown in the registration and in connection with the goods and services listed on the registration.
European Union: A registered mark is vulnerable to attack in the European Union for non-use if the trademark has not been put to genuine use within a continuous period of five years. Genuine use is use in accordance with the trademark’s essential function and for the purpose of maintaining or creating market share within the European Union for the goods or services covered by the mark. While the European Union does not require a trademark owner to submit periodic statements of use to the European Union Intellectual Property Office, an action for cancellation of a mark due to non-use may be brought by any interested third party. Non-use may be excused if it is the result of circumstances arising independently of the will of the owner which constitute an obstacle to the use of the trademark.
Resumption of use after a five-year period of non-use may cure non-use, provided that, in the interim, no third party has filed an application to register or registered an identical or similar trademark, used an identical or similar trademark in “common law” member states, or filed an action for cancellation of the trademark on the grounds of non-use.
United Kingdom: A registered mark may be canceled in the United Kingdom for non-use if the trademark has not been used within a continuous five-year period. Any person may bring an action to cancel a trademark registration for reasons of non-use. To satisfy the use requirement, the amount of use may be minimal but must be more than merely token use of the mark, and the use must take place in the United Kingdom. Non-use can be excused if there are “proper reasons” for the non-use, which has relatively narrow scope.
Resumption of use of a trademark after a five-year period of non-use may cure non-use if preparation for the resumption of use began before the registrant was aware that an action to cancel the mark for non-use had been or was about to be initiated. The United Kingdom Intellectual Property Office does not require periodic statements of use.
Switzerland: Registered marks in Switzerland are vulnerable to attack on the grounds of non-use if there has not been serious use in Switzerland within a continuous period of five years. Serious use is defined as use in the form of sales and marketing efforts that demonstrate the willingness of the trademark owner to satisfy arising market demand. Any interested third party can bring an action for cancellation due to non-use. Non-use may be excused if it arose due to import restrictions, other government policies, or circumstances outside the control of the trademark owner. Resumption of use after a period of five years of non-use may cure non-use provided that, in the interim, no third party has brought an action for cancellation of the trademark on the grounds of non-use or asserted non-use of the trademark (see below). Periodic statements of use or other mandatory filings setting forth use of the mark are not required.
Swiss trademarks are also vulnerable to assertions of non-use, which need not occur in formal proceedings. For example, assertions of non-use can take the form of a registered letter to the trademark owner or the owner’s attorney. If unrefuted, the assertion of non-use has the effect of barring the trademark owner from asserting rights under the registration against the party asserting non-use.
Norway: A registered mark in Norway is vulnerable to attack on the grounds of non-use if there has not been use on a commercial scale in Norway within a continuous five-year period. Periodic statements of use or other mandatory filings setting forth use of the mark are not required. An action for cancellation due to non-use can be brought by any interested third party. Non-use may be excused if it arose due to import restrictions or other government policies. Resumption of use after a five-year period of non-use may cure non-use provided that, in the interim, no third party has brought an action for cancellation of the trademark on the grounds of non-use.
Japan: A registered mark in Japan is vulnerable to attack on the grounds of non-use if the mark has not been used in Japan within a consecutive three-year period. The amount of use required is minimal, and an action for cancellation due to non-use may be brought by any interested third party. Non-use can be excused if it arose due to government policies, a natural calamity, or an act of God. Resumption of use after a three-year period of non-use may cure non-use if preparation for the resumption of use began before the registrant was aware that action for cancellation due to non-use had been or was about to be filed.
Mexico: A registered mark in Mexico is vulnerable to attack on the grounds of non-use if there has not been use on a commercial scale in Mexico within a continuous period of three years. Any interested third party may bring an action for cancellation on the grounds of non-use. Non-use may be excused if it arose due to import restrictions or other government policies. Resumption of use of a mark after a three-year period of non-use may cure non-use provided that preparation for the resumption of use began before the registrant was aware than action for cancellation due to non-use had been or was about to be initiated.
Owners of Mexican trademark registrations, including those who have marks registered through the Madrid protocol, are required to submit a Declaration of Use to the Mexican Institute of Industrial Property within three months from the three-year anniversary of registration of the mark. Additionally, trademark owners are obliged to submit a Declaration of Use upon any request for renewal of the trademark, including renewal requests made through the Madrid protocol. If a Declaration of Use is not submitted by the required deadline, the registration is automatically canceled.
Andrus Intellectual Property Law will docket these deadlines to ensure trademark owners do not lose their registrations. No specimen of use is required to accompany declarations of use.
Australia: A registered mark is vulnerable to attack in Australia if the mark has not been used in Australia within a three-year period ending one month before an application for removal on the grounds of non-use is filed. However, a mark registered in Australia is immune to removal on the grounds of non-use for five years from the filing date (if filed before February 24, 2019) or for three years from the date that the particulars of the trademark were entered into the register (if filed on or after February 24, 2019). A single sale made during the relevant three-year period can be sufficient to defeat an application for removal due to non-use, as long as the use is genuine commercial use. Any third party can submit an application for removal on the grounds of non-use. Non-use may be excused if it arose due to import restrictions or other government policies. Resumption of use of a mark after a three-year period of non-use may cure non-use if preparation for the resumption of use began before the registrant was aware that an action had been or was about to be initiated. Australia has no requirements for periodic statements of use or other mandatory filings setting forth use.
China: A registered mark is vulnerable to attack in China if the mark has not been used for three consecutive years dating back from the date of receipt of the application for cancellation on the grounds of non-use by the China Trademark Office. The amount of use required to avoid cancellation is minimal, but it must take place within China. Periodic statements of use or other mandatory filings setting forth use are not required. Any interested third party may submit an application for cancellation on the ground of non-use. Non-use may be excused if it arose due to government policies or force majeure. Resumption of use after a three-year period of non-use does not cure non-use.
For assistance navigating domestic and international trademark use requirements, please contact your attorney at Andrus Intellectual Property Law.
Associate Attorney Dillon E. Durnford and Associate John P. Dyro joined Andrus full-time in July 2023.
Dillon’s practice focuses on acquiring strong patent protection for complex technological innovations through domestic and international patent prosecution. Dillon has experience with a wide range of electrical, software, and automation-related technologies, including digital imaging, image analysis, machine learning and artificial intelligence, computer-aided diagnostics, medical devices, depth imaging, cloud computing, software, bioinformatics, internet-of-things (IoT), network security, electrical circuits, and mechanical devices.
John joined Andrus after receiving his J.D. from the University of Notre Dame Law School. John focuses on assisting partners and attorneys with domestic and international patent and trademark prosecution and enforcement. He helps attorneys counsel clients regarding patentability and infringement issues. He also assists registered patent attorneys with the preparation and prosecution of patent and trademark applications before the United States Patent and Trademark Office.
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