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 firstname.lastname@example.org.