Maria Scungio

Owners of trademarks and copyrights registered in the U.S. have available a potent enforcement tool to stave off entry of increasing volume of infringing and counterfeit goods into the U.S. – recordation of these rights with U.S. Customs and Border Protection. CBP has recently extended recordation eligibility to pending copyright applications on a temporary six-month basis. The investment for recordation is nominal, the process is simple, and the IP rights enforcement services received in return are significant.

Some businesses, as a result of the pandemic, have been pressed to discontinue manufacture or sale of products or have otherwise limited the scope of their business activities. As a result, in 2020 the use of one or more of the trademarks owned by your business may have stopped. Under U.S. trademark law, in the fifth year of a trademark registration term, and every ten years thereafter, a post-registration maintenance filing at the USPTO is required (e.g., evidence and a sworn statement about continuous trademark use in U.S. commerce). If sustained discontinuity of trademark use has occurred what options are available to keep a trademark registration active?