On September 18, 2020, Governor Cuomo issued an Executive Order extending the toll “that prohibited the initiation of a proceeding or enforcement of an eviction of any commercial tenant for nonpayment of rent . . . through October 20, 2020” (Commercial Evictions Due to Non-Payment). As a result of this Order, commercial evictions have now been, once again, stayed until at least October 20, 2020.  Despite the language of the Order, commercial summary non-payment proceedings have been commenced and accepted by the New York Courts, however, enforcing a warrant and evicting a commercial tenant is clearly stayed through October 20.

As governmental orders and legislation can change daily and may alter a landlord’s decision and strategy, staying informed is of the utmost importance. If you need assistance, please contact Marci Zinn at mzinn@jaspanllp.com or Christopher E. Vatter at cvatter@jaspanllp.com.

 

The COVID-19 crisis has placed significant pressure on landlords throughout the State.   Governor Cuomo and the Courts have issued various stays of enforcing warrants of eviction preventing landlords from evicting both residential and commercial tenants, although there is no stay on commencing a proceeding to seek a warrant of eviction.

For example, on June 30, 2020, the Governor signed the “Tenant Safe Harbor Act” which, among other things, prohibits evictions of residential tenants but allows a landlord to obtain a money judgment for nonpayment of rent (Covid-19 Eviction updates). On August 12, 2020, the Chief Administrative Judge, Lawrence Marks, issued an Administrative Order presently staying residential and commercial evictions until no sooner than October 1, 2020 (Administrative Order for Eviction Notices).

On September 4, 2020, the Centers for Disease Control and Prevention (CDC), issued an Order under Section 361 of the Public Health Service Act, temporarily staying residential evictions until December 31, 2020, to prevent the further spread of COVID-19.  “Under this Order, a landlord, owner of a residential property, or other person with a legal right to pursue eviction or possessory action, shall not evict any covered person[1] from any residential property in any jurisdiction to which this Order applies during the effective period of the Order.” (CDC Issues Shall Not Evict Order).

There are certain eligibility requirements that a covered person must demonstrate in order to obtain the stay.  These eligibility requirements include that:

  • The individual used their “best efforts to obtain all available government assistance for rent or housing”;
  • The individual does not expect to: (i) earn more than $99,000 in 2020, or $198,000 if they are married and filing a joint tax return; (ii) “was not required to report any income in 2019 to the U.S. Internal Revenue Service, or (iii) received an Economic Impact Payment (stimulus check) pursuant to Section 2201 of the CARES Act”;
  • The individual is experiencing a “substantial loss” of income, “or extraordinary out-of-pocket medical expenses”;
  • The individual is using their best efforts to make partial timely payments that are close to the full payment; and
  • An eviction would likely result in homelessness or being forced to move to another place that was either more expensive or where the individual could get sick from being close to others.

According to the Bill’s explanation, “[l]andlords would still be able to obtain money judgments for unpaid rent that accrued during that time period, but tenants would remain stably located in the meantime”.  The CDC Order also “does not relieve any individual of any obligation to pay rent, make a housing payment, or comply with any other obligation that the individual may have under a tenancy, lease, or similar contract.”  Moreover, “[n]othing in this Order precludes the charging or collecting of fees, penalties, or interest as a result of the failure to pay rent or other housing payment on a timely basis, under the terms of any applicable contract.” The CDC Order also does not prevent evictions based upon grounds that are not related to non-payment of rent, such as criminal behavior or destruction of the property. The CDC Order also does not prevent the non-renewal of leases.

The Realities of Future Landlord/Tenant Litigation

With many tenants not paying any rent, landlords may find themselves planning to litigate at the first opportunity. The CDC Order adds another hurdle that landlords with residential tenants will need to clear before evicting a defaulting tenant.  However, landlords must keep in mind the practical realities of life in a post-coronavirus world in deciding how to proceed.

When courts resume full operations and the moratorium on evictions are completely lifted, there will be a torrent of landlord-tenant cases and inordinate delays as a result. In fact, those delays have already started, as summary eviction proceeding may be commenced, albeit a landlord cannot yet enforce a warrant of eviction. Those proceedings have “return dates” that can be months in the future.  Post COVID-19, substantial time and money will need to be expended if litigation is pursued. There will also be more risk involved, as judges with equitable powers may favor tenants that were forced to close their businesses or lost their jobs during the height of the pandemic.  With that in mind it may make sense for landlords to consider alternatives to litigation. The other alternative is to commence litigation now, to “get in line” and not wait until the system is flooded with cases, and use the time (and leverage) to negotiate with their tenants.

Landlords should consider whether their business plans and financial circumstances would be better served by negotiation and private resolution. ​If you conclude that your business needs are best served by negotiating now rather than waiting to go to court, reach out to your tenants and suggest that accommodations can be made during this time, while reserving your right to later pursue collection of the full amount of rent due.

Conclusion

Although it may feel like the world has come to a halt, this is no time for landlords to sit on their hands. Taking a pragmatic but proactive approach to non-paying tenants will help to insulate a landlord from the chaos that will undoubtedly ensue when the moratorium on evictions is lifted.

As governmental orders and legislation can change daily and may alter a landlord’s decision and strategy, staying informed is of the utmost importance. If you need assistance, please contact Marci Zinn at mzinn@jaspanllp.com or Christopher E. Vatter at cvatter@jaspanllp.com.

[1] The CDC defines the “Covered Person” as “any tenant, lessee, or resident of a residential property who provides to their landlord, the owner of the residential property, or other person with a legal right to pursue eviction or a possessory action” who can meet certain eligibility requirements.

The COVID-19 crisis has placed great pressure on commercial real property taxpayers in Nassau County who already pay some of the highest real property tax rates in the Country.

In Nassau County, commercial properties are assessed for purposes of real property taxation based on the value of the real property, which is determined in large part on the real properties’ potential to generate income.  The ongoing COVID-19 crisis has already crippled many commercial property owners this year through mandatory closures or defaulting tenants.  There appears to be virtually no end in sight for some commercial owners and operators.  The threat of present and possible future restrictions on operations makes tenants anxious to terminate current leases and wary to enter into new leases.  As a result, it is important that property taxes be grieved by either the property owner or tenant to ensure that the real property is not being over assessed.

In any taxing jurisdiction a property is taxed on the “tax status” date based upon current conditions. In Nassau County, the next tax status date is January 1, 2021. These real property assessments can be grieved based upon an overvaluation and/or overassessment. While the next evaluation by the taxing authority will presumably reflect the adverse impacts on commercial property values due to the COVID-19 crisis and hopefully lower the assessed value for such real properties, it is more important than ever for property owners and their tenants to grieve their real property assessments to make sure that their properties are not being overvalued and over-assessed.

However, the issue as to who has standing to challenge these commercial taxes where the property is leased must be addressed before filing any such grievance.  Most triple net leases require the tenant to pay all real property taxes on the property, and the tenant is often authorized under the lease to grieve the assessments underlying the taxes the tenant is required to pay. The property owner/landlord in a triple net tenancy has no interest or incentive to grieve that assessment because the tenant pays all of the taxes and would be the sole beneficiary of a successful grievance.

In a decision which came out just a few months before the COVID-19 crisis hit, the Appellate Division, Second Department (which covers Nassau County), issued a decision which could undermine a tenants’ ability to grieve its commercial real property taxes.  In DCH Auto v. Town of Mamaroneck, 178 A.D.3d 823 (2d Dep’t 2019), the Appellate Court affirmed a lower court decision which dismissed tax certiorari petitions filed by a net tenant even though the lease provided that the tenant/petitioner has the right to contest any assessment at its sole cost and expense and could settle any such proceeding without the consent of the owner. The Appellate Court ruled that the tenant/petitioner failed to satisfy a condition precedent to bringing the petitions because the administrative grievances filed with the assessor were not filed on behalf of the owner or an agent of the owner as required by RPTL §524(3), RPTL §706(2). (See Matter of Larchmont Pancake House v. Board of Assessors, et al., 153 A.D.3d 521 (2d Dep’t 2017), aff’d. on other grounds 33 N.Y.3d 228).

Therefore, in order to reduce the real property’s assessed value to reflect the adverse impact due to COVID-19, a commercial tax payer must file a grievance for the January 1, 2021 filing period.  It is important to ensure that a commercial tenant in Nassau County who files the grievance has right to grieve the tax assessment of its leased property. Similarly, in the event that there are no tenants, it is important for property owners to file the necessary timely grievance.

If you have any question concerning your Nassau County commercial property taxes due to COVID-19 or otherwise, please feel free to contact Andrew M. Mahony, Esq., Chair of the firm’s Tax Certiorari and Condemnation Group at (516) 746-8000 or amahony@jaspanllp.com.

Jaspan Schlesinger LLP partner Robert Londin will moderate the second episode of a five-part webinar series dedicated to private Mergers and Acquisitions transactions.  The series spans from early transaction concerns and planning to key provisions of transaction documents, and Mr. Londin will serve as moderator for the entire series.  “Episode #2 is one of my favorite installments of this series.  This episode focuses on key provisions of M&A transaction documents” noted Robert Londin of the JSLLP Corporate and Commercial Transactions Group.  Episode #2 of the series from Financial Poise debuts on the West LegalEd Center on September 3, 2020.

For information about the Financial Poise webinar series episode, CLICK HERE: M&A Boot Camp #2

For more about Robert Londin, CLICK HERE:  Robert Londin Corporate & Commercial Transactions

Debtor fails to comply with the terms of his or her contractual obligations.  Creditor then sues Debtor for breach of contract and ultimately prevails and obtains a judgment against Debtor.  Creditor then seeks post-judgment discovery from Debtor in a search of Debtor’s assets in order to satisfy the judgment against him or her.  In response, Debtor invokes the constitutional privilege against self-incrimination under federal and state law and Debtor refuses to provide the requested post-judgment discovery to Creditor.  Now what?

In New York, a judgment creditor is generally entitled to broad discovery to assist in enforcing the judgment, especially since the evidence is typically within the possession of the judgment debtor.  See  Petrocelli v. Petrocelli Elec. Co., Inc., 121 A.D.3d. 596 (1st Dep’t. 2014).  In addition, N.Y. C.P.L.R. § 5223 compels disclosure of all matter relevant to the satisfaction of a judgment and sets forth a generous standard which allows the judgment creditor a broad range of inquiry through either the judgment debtor or any third person with knowledge of the debtor’s property.  See  ICD Group, Inc. v. Israel Foreign Trade Co. (USA), 224 A.D.2d 293, 294 (1st Dep’t. 1996).

The refusal of the Debtor to provide the requested post-judgment discovery will likely result in the Creditor moving to hold Debtor in contempt.  The law is clear that a party may not be held in contempt based upon a good faith invocation of the privilege against self-incrimination, which can be asserted in any proceeding, civil or criminal, and which protects against disclosures which the debtor reasonably believes could be used in a criminal prosecution or could lead to other evidence that might be so used.  See Carver Fed. Sav. Bank v. Shaker Gardens, Inc., 167 A.D.3d 1337, 1340 (3d Dep’t. 2018) (internal cites omitted).  However, the law is also clear that the witness asserting the privilege must have reasonable cause to apprehend danger from a direct answer and the witness is not exonerated from answering merely because the witness declares that in so doing he or she would incriminate himself or herself.  Id.

Among the documents usually sought from a judgment debtor by a judgment creditor in the search of assets to satisfy a judgment are tax returns.  Generally, the disclosure of tax returns is disfavored due to their confidential and private nature.  See Pinnacle Sports Media & Entertainment, LLC v. Greene, 154 A.D.3d 601 (1st Dep’t. 2017).  However, once a judgment debtor invokes the privilege against self-incrimination, the issue becomes whether any recognized exception to that privilege allows production of the judgment debtor’s tax returns.  The answer is yes.  It has been held in New York that a judgment debtor’s income tax returns, W-2 wage statements and 1099 forms all fall within what is known as the “required records exception” to the privilege against self-incrimination.  Shaker Gardens, Inc., supra, 167 A.D.3d at 1341.

Under the “required records exception”, the Fifth Amendment privilege against self-incrimination cannot be asserted with respect to records which are required, by law, to be kept and which are subject to governmental regulation and inspection.  Id. (internal cites omitted).  In order to constitute “required records” the documents must satisfy a three-part test:  (1) the requirement that they be kept must be essentially regulatory, (2) the records must be of a kind which the regulated party has customarily kept, and (3) the records themselves must have assumed ‘public aspects’ which render them analogous to public documents.  Id.  Tax returns, W-2 wage statements and 1099 forms have all been held to fall under this rubric.  Id.  That means that despite Debtor’s invocation of the privilege against self-incrimination, Debtor is required to produce his or her tax returns, W-2 wage statements and 1099 forms in response to post-judgment disclosure requests made by Creditor.  The Debtor’s failure to produce the requested tax documents can lead to a judicial finding of civil contempt against the Debtor.

What about the rest of the documents sought by Creditor to assist in the search of assets to satisfy the judgment?  Assuming the information sought by Creditor is customarily asked at judgment debtor examinations and there is no indication that the purpose of the examination is anything other than an ordinary search of Debtor’s assets to satisfy the judgment against him or her, then Debtor will be required to establish that any fear of criminal prosecution based on the disclosure of the requested information is anything other than “imaginary” or based on something more than a “remote and speculative possibility.”  See Shaker Gardens, Inc. , 167 A.D.3d at 1342 (internal cites omitted).  Where the danger of incrimination is not readily apparent, the witness is required to establish a factual predicate for the invocation of the privilege against self-incrimination.  Id.  That means that Debtor cannot make a broad, undifferentiated assertion of the privilege as to each and every question asked at a judgment debtor examination or to all documents requested by Creditor.  Instead, in order to effectively invoke the protections of the privilege against self-incrimination Debtor must make a particularized objection to each discovery request.  Id.  That will likely require the trial court to conduct an in camera inquiry to assess the validity of the assertion of the privilege upon particularized objections.  Id.  As to documents, Debtor is required to establish a factual predicate and will usually require the submission of the documents at issue for an in camera inspection and/or compiling a privilege log in order to aid the Court in its assessment of a privilege claim and enable it to undertake in camera review.  Id. (internal cites omitted).

In sum, Debtor cannot invoke the privilege against self-incrimination as a vehicle to prevent disclosure of his or her tax returns, W-2 wage statements and 1099 forms to Creditor.  The failure to produce the tax documents can lead to a finding of civil contempt.  As to other requested post-judgment documents and questions asked during judgment debtor examinations, in order to invoke the privilege against self-incrimination, Debtor must show that the hazards of incrimination are substantial and real and not merely trifling or imaginary and that usually requires particularized objections to each discovery request and a determination by the Court of the validity of those particularized objections under the circumstances.

If you have any questions regarding the enforcement of contract rights, the satisfaction of judgments, or the interplay of enforcement of judgments with the privilege of self-incrimination, please feel free to contact Scott Fisher at (516) 746-8000, Ext. 248 or at sfisher@jaspanllp.com.

 

 

 

Many of our clients have asked whether they can commence a commercial foreclosure in New York State at this time.

On March 7, 2020, Governor Cuomo issued Executive Order (“EO”) Number 202, declaring a State disaster emergency for the State of New York.  On or about May 7, 2020, Governor Cuomo issued EO Number 202.28, which, among other things, decreed as follows:

There shall be no initiation of a proceeding or enforcement of either an eviction of any residential or commercial tenant, for nonpayment of rent or a foreclosure of any residential or commercial mortgage, for nonpayment of such mortgage, owned or rented by someone that is eligible for unemployment insurance or benefits under state of federal law or otherwise facing financial hardship due to the COVID-19 pandemic for a period of sixty days beginning on June 20, 2020.

There is no definition of what constitutes a “residential” or “commercial” mortgage. (It should be noted that legislation in New York enacted on June 17, 2020 specified that it applied only to individual  owner occupied 1-4 family dwellings)  To further complicate matters, EO Number 202.28 mixes both evictions and foreclosures, and uses the word “owned” with respect to the mortgage which is being foreclosed.  It would appear that despite this usage, EO Number 202.28 is not referring to the borrower/mortgagor, but rather, the current owner of the property being foreclosed, although this is not explicit.  It is also not clear whether the term “owner” includes a legal entity, such as a corporation or limited liability company, and whether the restriction applies if the legal entity is not facing financial hardship, but the owner(s) of the entity are facing such hardships.

On or about June 23, 2020, the Chief Administrative Judge of the State of New York issued Administrative Order (“AO”) AO/131/20, which, among other things, decreed as follows:

[E]ffective June 24, 2020, commencement papers in foreclosure proceedings involving residential or commercial property shall require the inclusion of (1) an attorney affirmation in the form attached as Exh. 1 and (2) a Notice to Respondent, in English and Spanish, in the form attached as Exhs. 2 and 3.

Again, there is no definition of what constitutes a “residential” or “commercial” property. AO/131/20 also decreed that, with limited exceptions:

[F]oreclosure matters commenced on or before March 16, 2020 shall continue to be suspended until further order; foreclosure proceedings filed after March 16, 2020 shall, upon the filing of a complaint (if no answer is filed thereafter) or the filing of an answer, be suspended until further order . . .

On or about July 7, 2020, the Chief Administrative Judge of the State of New York issued AO/143/20, which modified AO/131/20 as follows:

[F]oreclosure proceedings shall no longer require an accompanying attorney affirmation . . . as previously required pursuant to . . . AO/131/20 . . . and AO/131/20 [is] modified to this extent only, and shall otherwise continue in full force and effect . . .

Moreover, the prohibition contained in EO Number 202.28, discussed above, on initiating a proceeding or enforcing a foreclosure, under the specified circumstances, remains in place for a period of sixty (60) days from June 20, 2020.  As of now, that prohibition has not been further extended pursuant to Executive Order.

Due to the use of words and phrases which are not defined in EO Number 202.28, it is not entirely clear how to comply with the order when commencing a foreclosure, so as to avoid any potential sanction by the court.  While we cannot predict how a court will rule, we believe that a commercial foreclosure action may be commenced when the mortgaged property is owned by a legal entity, and the lender has not been informed that the owner of the mortgaged property, or a guarantor which owns such entity, is suffering financial hardship due to the pandemic.  Where the lender has been informed of a financial hardship (even if it is not substantiated) or where the owner is an individual, the safest course of action is to wait until after August 20, 2020 to file the foreclosure action (if the forgoing orders are not further extended).

It should be noted that there are different rules for residential mortgages for New York regulated banks, and for federally backed mortgage loans, including loans owned or insured by Fannie Mae, Freddie Mac, or guaranteed by FHA, Va, or USDA.

 

Long Island business owners and residents are slowly getting used to a new way of life as restrictions on social distancing are relaxed.  On June 6, 2020, Governor Cuomo issued Executive Order 202.38 permitting outdoor dining at restaurants subject to New York State Liquor Authority (“SLA”) regulations and Department of Health (“DOH”) guidance.  The next day, the Governor explicitly limited permission for outdoor dining to those regions that had reached Phase 2 of reopening.  On June 10, 2020, Long Island officially reached Phase 2 and local restaurant owners anxiously began to offer outdoor dining both on privately owned property and adjoining public sidewalks.  Most local municipalities have streamlined the permitting process for outdoor dining areas in an effort to assist business owners and the local economy in the wake of Covid-19.  In fact some municipalities have chosen to close public streets during certain evening hours to allow restaurants and bars to use those streets for outdoor dining.  Nevertheless, restaurant owners must be diligent about following rules and regulations set forth by both local and State officials with respect to controls on outdoor dining and associated public gatherings.

Rules and regulations concerning outdoor dining currently fall into two categories with the first being those enacted as a result of Covid-19 and the second being those in effect prior to Covd-19.  Regulations on outdoor dining specific to Covid-19 are geared towards social distancing and related public health concerns.  Outdoor space can include an awning or roof but there must be two open sides for airflow.  The tables in an outdoor dining space must be a minimum of six feet apart.  If it is impossible for the tables to be six feet apart, barriers of at least five feet in height must be installed between the tables and those barriers cannot interfere with access to an emergency exit.  Proper face coverings must be worn by restaurant employees at all times and patrons must also wear face coverings which can be removed while seated at an outdoor table.  Additional DOH guidance can be found at outdoor dining guidelines NY.

Equally important to those rules and regulations related to Covid-19 are municipal regulations for outdoor dining that typically relate to zoning.  Restaurant owners must be cognizant of their total permitted occupancy pursuant to an existing certificate of occupancy or certificate of completion.  Municipalities will not allow the number of occupants in an outdoor space to exceed the legally permitted maximum indoor occupancy.  This is true even if the proposed outdoor space can accommodate a larger number of occupants while abiding to social distancing requirements.  The reason being that municipal zoning codes typically require off-street parking spaces based on the number of occupants in a particular building and/or outdoor space.  While a restaurant may have a large outdoor dining area, which may even include a portion of a private parking lot, available parking for patrons is always is a concern.  The need for available parking at restaurants will only become more prevalent as Long Island reenters Phase 3 as of June 24, 2020 and limited indoor dining, in addition to outdoor dining, is permitted at restaurants.  Local code enforcement officers will likely be visiting restaurants to assure adherence to occupancy limitations and other safety issues.  To that end, pedestrians must be able to utilize public sidewalks and easily access businesses adjoining restaurants.

Some local villages and towns are allowing restaurants to use public property for outdoor dining.  Restaurant owners must review local requirements prior to using public space adjoining their private property.  Any municipality allowing use of public property for outdoor dining is requiring an application along with adequate proof of liability insurance and where necessary written consent from adjoining property owners.  The State Liquor Authority (“SLA”) is allowing service of alcohol in outdoor dining areas subject to certain restrictions which include service only to individuals sitting at a bar or table.  People looking forward to participating in bar games, including darts and pool, will have to continue waiting until social distancing restrictions are further reduced.  Moreover, restaurant owners must provide the SLA with an updated diagram depicting the outdoor seating within five business days of the expansion.  Failure to abide with SLA regulations can result in monetary fines and license suspension.  Additional information concerning SLA guidelines for outdoor dining can be found at  SLA Guidance.

 

On June 24, 2020, Long Island joined the rest of New York State, with the exception of New York City, in entering Phase 3 of re-opening for business. Those non-essential businesses permitted to re-open and resume in-person operations under Phase 3 must follow the procedures established and comply with the guidelines adopted by New York State to limit the spread of COVID-19.

According to the phased re-opening of New York State, once certain health metrics are met certain industries will be permitted to resume in-person operations, provided those businesses comply with specific guidelines established by New York State, as well as applicable federal and local laws, regulations, and standards. The details for Phases 1, 2, 3 and 4, together with the industry-specific guidelines for re-opening can be found at NY Government Re-Opening. The primary industries eligible to re-open for in-person operations under Phase 3 are restaurants/food services and personal care businesses. The specific guidelines for Phase 3 non-essential businesses to follow upon re-opening can be found at phase 3 industries re-opening. In conjunction with the New York State Department of Health, New York State has established industry-specific public health and safety guidelines which must be adhered to by each non-essential business in order to enter each phase of re-opening. In addition, each business must complete a business safety plan and submit an affirmation online which confirms that the business has reviewed and understands the industry-specific guidelines. The affirmation covering Phase 3 businesses can be found in the link cited above for Phase 3 industries.

Under Phase 3, the Food Services Guidelines for Employers and Employees, which can be found at Food Services Summary Guidelines apply to all restaurants and food services establishments, including food trucks and other food concessions. In Phase 3, such food services establishments may open indoor spaces with seating for customers, provided they comply with the Food Services Guidelines, which address both mandatory requirements and recommended best practices. Those guidelines cover requirements for physical distancing, personal protective equipment, hygiene, cleaning, and disinfection, communication, and screening. In addition, all operators of food service sites are advised to stay up to date with any changes to state and federal requirements related to such establishments and to incorporate those changes into their operations. The guidelines are also not intended to replace any existing applicable local, state, and federal laws, regulations, and standards.

Under Phase 3, personal care services include non-hair related personal care businesses and services, including tattoo and piercing facilities, appearance enhancement practitioners, massage therapy, spas, cosmetology, nail specialty, UV and non-UV tanning, or waxing. The Personal Care Services Guidelines for Employers and Employees can be found at Personal Care Re-Opening . Those guidelines do not apply to any hair-related personal care services (e.g., haircutting, coloring, or styling), which are addressed in their own Hair Salon and Barbershop Guidelines for Employers and Employees at Hair Salons and Barbershops Re-Opening . Included in the guidelines for personal care services are mandatory and recommended best practices covering physical distancing, workplace activity, personal protective equipment, hygiene, cleaning, and disinfection, communication, and screening. As with all other businesses, all personal care businesses are advised to stay up to date with any changes to state and federal requirements related to such establishments and to incorporate those changes into their operations. The guidelines are also not intended to replace any existing applicable local, state, and federal laws, regulations, and standards.

As each phase of re-opening expands the resumption of in-person business operations, it is imperative that each industry-specific public health and safety guidelines adopted by New York State are adhered to by businesses for mandatory and recommended best practices for ensuring both the ability to sustain and maximize the widespread resumption of in-person business activities while minimizing the threat and spread of COVID-19.

If you have any questions regarding the re-opening process and guidelines for your specific business or industry, please feel free to contact any of our attorneys, including our Coronavirus Response Team, at 516-746-8000 or at Jaspan Schlesinger COVID-19 Resource Center.

          On June 3, 2020, the United States Patent and Trademark Office (“PTO”) launched a COVID-19 Response Resource Center (“Resource Center”) to provide a central hub for information about the PTO’s efforts and other helpful information for stakeholders and other interested parties in response to the COVID-19 pandemic.  The Resource Center is intended to improve access to PTO initiatives, programs, and other helpful intellectual property (“IP”)-related information regarding the COVID-19 outbreak.

          In launching the Resource Center, Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the PTO, emphasized that, “The USPTO stands shoulder-to-shoulder with inventors and entrepreneurs and is working on a variety of measures to incentivize, protect, and disseminate COVID-19 related innovation. The COVID-19 Response Resource Center will provide inventors, entrepreneurs, and IP practitioners with a centralized destination to access information and assistance needed to meet the challenges of these times.”

          The Resource Center will allow users to easily view information on a number of critical initiatives to aid the public throughout the ongoing COVID-19 crisis.  Among the resources available are the following:

* patent and licensing resources for inventors, entrepreneurs, or businesses interested in contributing to critical medical technologies and include   the Patent Pro Bono Program and “Patents 4 Partnerships” IP marketplace platform for licensing opportunities;

* innovation incentives, including the launch of the COVID-19 Prioritized Examination Pilot Program for accelerating the evaluation of patent applications directed to COVID-19 related technologies, including the diagnosis, prevention or treatment of COVID-19 and the PTO has also launched a program which encourages voluntary early publication of patent applications;

* initiatives to educate and prevent trademark counterfeiting and consumer fraud in the marketplace related to COVID-19; and

* international updates, with the World Intellectual Property Organization compiling Information from foreign IP offices on measures taken to assist stakeholders during the global health crisis.

          As to trademark counterfeiting and consumer fraud, the PTO recognizes that the COVID-19 pandemic has led to a surge in fraudulent activity, including the advertising and sale of counterfeit treatments and products. The PTO has identified several resources available to help healthcare workers and the general public identify and report instances of fraud and counterfeiting related to the COVID-19 outbreak. Those resources include: i) the United States Food and Drug Administration’s (“FDA”) Fraudulent Coronavirus Disease 2019 (COVID-19) Products, which can be found at https://www.fda.gov/consumers/health-fraud-scams/fraudulent-coronavirus-disease-2019-covid-19-products; the United States Department of Homeland Security’s (“DHS”) COVID-19 related fraud initiatives, which can be found at https://www.dhs.gov/news/2020/04/24/fact-sheet-dhs-taking-covid-19-related-fraud; and the Federal Trade Commission’s (“FTC”) Coronavirus Advice for Consumers, which can be found at https://www.ftc.gov/coronavirus/scams-consumer-advice.

          With respect to trademark counterfeiting, the PTO has the following “four P’s” advise for consumers and healthcare workers on how to spot a counterfeit product or service:

* Place: Are you buying from a trusted source, either in-person, on-line, or at a physical store?

* Price: If the price sounds too good to be true, it probably is.

* Packaging: Does the packaging look “off,” e.g., graphics and printing blurred, colors imbalanced, labels not on straight, misspellings?

* Product: Does the product and labeling have a quality look? Does it look comparable to what you’ve purchased before? Is this product known to have been counterfeited?

          If you have encountered fraud or counterfeiting related to the COVID-19 pandemic, the PTO is recommending that fraudulent schemes and suspected counterfeit products be reported to DHS at COVID19FRAUD@DHS.GOV; scams or other consumer problems can be reported to the FTC at https://www.ftccomplaintassistant.gov/#crnt&panel1-1; and unlawful sales of internet medical products related to the COVID-19 pandemic can be reported to the FDA at https://www.accessdata.fda.gov/scripts/email/oc/buyonline/english.cfm.

          According to the PTO, the Resource Center will be updated on a continuing basis to incorporate new information, programs, and initiatives.

          If you have any questions regarding the Resource Center initiatives or have been the victim of trademark counterfeiting or fraud related to the COVID-19 pandemic, or need assistance with the filing of any trademark documents or fees, contact the Chair of our Trademark Practice Group, Scott Fisher, at (516) 393-8248 or sfisher@jaspanllp.com.

          In recognition that the COVID-19 pandemic has imposed significant hardships on trademark applicants and registrants, pursuant to the authority provided to it by the Coronavirus Aid, Relief, and Economic Security (“CARES”) Act, the United States Patent and Trademark Office (“PTO” or “Office”) has waived certain trademark-related fees and has twice extended the time to file certain trademark-related documents or fees that would otherwise have been due on or after March 27, 2020.  That relief is set to expire on May 31, 2020.    

          As businesses begin to reopen and to resume operations, the PTO understands that some stakeholders, particularly small businesses and individuals, will continue to require relief caused by COVID-19 related hardships.  In recognition of that, the PTO has issued the following guidelines to assist parties in need of relief after May 31, 2020:

  • Trademark applicants who were unable to submit a timely response or fee in response to a PTO communication should file a petition to revive the application.  See 37 C.F.R. §§ 2.6(a)(15), 2.66.
  • Trademark applicants who missed the 36-month statutory deadline for filing a Statement of Use, which therefore resulted in the application being abandoned, should use the PTO’s Trademark Electronic Application System(“TEAS”) “Petition to the Director” form.  See 37 C.F.R. § 2.146.

  • Trademark registrants who missed a statutory deadline, which resulted in a cancelled or expired registration, or who were unable to submit a timely response or fee in response to a PTO communication regarding a registration, should also use the TEAS “Petition to the Director” form.  See 37 C.F.R. § 2.146.

In addition, the PTO will continue to waive the petition fee to revive abandoned trademark applications and cancelled or expired trademark registrations which became abandoned or were cancelled or expired as a result of the COVID-19 pandemic.  For trademark applicants and owners who, because of the COVID-19 pandemic, were unable to timely submit a trademark filing or payment in reply to an Office communication having a due date of June 30, 2020, or earlier, such that the trademark application became abandoned or the trademark registration was cancelled or expired, the PTO will waive the petition fee to revive the abandoned application or reinstate the cancelled or expired registration.  The petition must include a statement that the delay in filing or payment was due to the COVID-19 pandemic, which means that a practitioner, applicant, registrant, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances such that the COVID-19 outbreak materially interfered with timely filing or payment.

          For all other situations not specified herein, where the COVID-19 pandemic has prevented or interfered with a filing before the Trademark Trial and Appeals Board (“TTAB”), a request or motion for an extension or reopening of time, as appropriate, can be made.

          The PTO remains open for the electronic filing of trademark and TTAB documents and fees.  Since the PTO remains open for the filing of trademark documents and fees, the waivers for an extension of trademark filing or payment deadlines or petition fees are available only if the delay is due to the COVID-19 outbreak, as defined herein.  The PTO has stated that it will continue to  evaluate the evolving situation around the COVID-19 outbreak and its impact on the PTO’s operations.

          If you have any questions regarding the extension of trademark filings or fees, the waiver of petition fees to revive abandoned trademark applications or cancelled trademark registrations, or need assistance with either requesting any trademark extensions or with the filing of any trademark documents or fees, contact the Chair of our Trademark Practice Group, Scott Fisher, at (516) 393-8248 or sfisher@jaspanllp.com.