The U.S.P.T.O Extends Waiver of Trademark-Related Timing Deadlines Under the CARES Act and Provides Other Relief to Trademark Applicants and Owners

By Scott Fisher on May 11, 2020

On April 28, 2020, 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”) further extended the time to file certain trademark-related documents or fees that would otherwise have been due on or after March 27, 2020. The PTO also clarified the relief available to trademark applicants or owners who were unable to timely submit a filing or payment in reply to a communication from the PTO due to the COVID-19 outbreak, which resulted in the trademark application being held abandoned or the trademark registration expiring or being cancelled.

In accordance with Section 12004(a) of the CARES Act, the Director of the PTO has determined that, as of April 28, 2020, the emergency created by the COVID-19 pandemic has continued to prejudice the rights of applicants, registrants, trademark owners, or others appearing before the PTO in trademark matters, and has continued to prevent applicants, registrants, trademark owners, or others appearing before the PTO in trademark matters from filing a document or fee with the PTO. In particular, the Director of the PTO has acknowledged that the spread of the coronavirus has significantly disrupted the operations of numerous businesses and law firms. As a result, a person who is unable to meet trademark-related timing deadlines due to the COVID-19 pandemic may be eligible for a waiver of certain deadlines.

For any of the following categories, where the due date was due between, and inclusive of, both March 27, 2020, and May 31, 2020, will be considered timely if filed on or before June 1, 2020, 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:

i) 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);

ii) 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);

iii) 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);

iv) priority filing basis under 15 U.S.C. § 1126(d)(I) and 37 C.F.R. § 2.34(a)(4)(i);

v) priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c);

vi) 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);

vii) affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a);

viii) renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; or

ix) 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.

The PTO considers the effects of the COVID-19 outbreak to be an “extraordinary situation” within the meaning of 37 C.F.R. § 2.146 for affected trademark applicants and owners. As such, the PTO is also providing relief in the form of a waiver of the petition fee to revive abandoned trademark applications and cancelled or expired trademark registrations. In particular, 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 May 31, 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, as discussed above. The inclusion of the statement that the delay in filing or payment was due to the COVID-19 outbreak will be treated by the PTO as a request for a waiver of the petition fee under 37 C.F.R. § 2.6(a)(15). In addition, the petition must be filed not later than two (2) months after the issue date of the notice of abandonment or cancellation. 37 C.F.R. §§ 2.66(a)(1) and 2.146(d)(1). If, however, the trademark applicant or registrant did not receive a notice of abandonment or cancellation, the petition must be filed not later than six (6) months after the date the trademark electronic records system indicates that the application is abandoned or the registration is cancelled or expired. 37 C.F.R. §§ 2.66(a)(2) and 2.146(d)(2).

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 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.