Like most other areas of life, the COVID-19 pandemic is impacting trademark deadlines imposed by the United States Patent and Trademark Office (“PTO” or “Office”). In recognition of the difficulties affecting entrepreneurs, businesses, individuals, and practitioners, on March 31, 2020, the PTO announced extensions to the time allowed to file patent and trademark-related documents and to pay certain required filing fees. The PTO is taking action pursuant to the temporary authority provided to it by the Coronavirus Aid, Relief, and Economic Security (“CARES”) Act signed into law on March 27, 2020.
This post is limited to the extensions applied to trademark-related filings and fees. Pursuant to the CARES Act, the PTO is extending the time to file certain documents and fees which otherwise would have been due on or after March 27, 2020.
In accordance with Section 12004(a) of the CARES Act, the PTO may toll, waive, adjust, or modify any timing deadline established by the Trademark Act in effect during the COVID-19 emergency period described in the CARES Act, if the Director of the PTO determines the emergency: (1) materially affects the functioning of the PTO; (2) prejudices the rights of applicants, registrants, patent and trademark owners, or others appearing before the Office; or (3) prevents applicants, registrants, patent and trademark owners, or others appearing before the Office from filing a document or fee with the PTO. CARES Act, Section 12004(e).
As of March 31, 2020, the Director of the PTO has determined that the emergency created by the COVID-19 pandemic has prejudiced the rights of applicants, registrants, trademark owners, or others appearing before the PTO in trademark matters, and has prevented applicants, registrants, trademark owners, or others appearing before the PTO in trademark matters from filing a document or fee with the PTO.
For any of the following categories, where the due date was due between and inclusive of, both March 27, 2020 and April 30, 2020, the due dates will be extended 30 days from the initial date it was due, provided that the filing is accompanied by a statement that the delay in filing or payment is due to the COVID-19 outbreak, as defined below:
- response to an Office action, including a notice of appeal from a final refusal, under 15 U.S.C. § 1062(b) and 37 C.F.R. § 2.62(a) and 2.141(a);
- statement of use or request for extension of time to file a statement of use under 15 U.S.C. § 1051(d) and 37 C.F.R. § 2.88(a) and 2.89(a);
- notice of opposition or request for extension of time to file a notice of opposition under 15 U.S.C. § 1063(a) and 37 C.F.R. § 2.101(c) and 2.102(a);
- priority filing basis under 15 U.S.C. § 1126(d)(I) and 37 C.F.R. § 2.34(a)(4)(i);
- priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c);
- transformation of an extension of protection to the United States into a United States application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a);
- affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a);
- renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; or
- affidavit of use or excusable nonuse under 15 U.S.C. § 1141k(a) and 37 C.F.R. § 7.36(b).
For purposes of the extension of trademark deadlines due to the COVID-19 outbreak, if 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, then the waiver request for delay in filing or payment will be approved.
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.
It should be noted that the PTO remains open for the electronic filing of trademark and TTAB documents and fees. Since the PTO remains opens for the filing of trademark documents and fees, the waiver for an extension of trademark filing or payment deadlines is available only if the delay is due to the COVID-19 outbreak, as defined herein.
If you have any questions regarding the extension of trademark filings or fees, 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 firstname.lastname@example.org.