USPTO Announces Further Extension of Certain Trademark Deadlines

On April 28, 2020, the U.S. Patent and Trademark Office announced that it was further extending the time to file certain patent and trademark-related documents and to pay certain required fees in a Notice posted on its website.[i]  (See USPTO Announces Further Extension of Certain Patent Deadlines).  As with the patent extensions discussed in the snippets Alert last week, the trademark extensions are in accordance with the temporary authority provided to the USPTO by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), signed by President Trump on March 27.  The USPTO has now further extended the time to file certain trademark-related documents and to pay certain required fees, which otherwise would have been due between March 27, 2020 and May 31, 2020, to June 1, 2020.  This is in addition to the prior extension the USPTO had announced on March 31, 2020.[ii]

Types of Deadlines Extended:

The trademark extensions apply to the following deadlines falling between March 27 and May 31:

• response to an Office action, including a notice of appeal from a final refusal;
• statement of use or request for an extension of time in which to file a statement of use;
• notice of opposition or request for an extension of time to file a notice of opposition;
• six-month deadline to file a U.S. trademark application claiming priority to a non-U.S. application under 15 U.S.C. § 1126(d)(1) and 37 C.F.R. § 2.34(a)(4)(i);
• six-month deadline to file a request for extension of protection to the United States claiming priority to a Madrid Protocol application under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c);
• three-month deadline to file a request for transformation of an extension of protection to the United States into a U.S. trademark application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a);
• declaration of use or excusable nonuse (i.e., a section 8 declaration of use) between the fifth and sixth years of registration and between each successive ninth and tenth years of registration;
• application for renewal of a registration (i.e., a section 9 application for renewal) between each successive ninth and tenth years of registration; and
• declaration of use or excusable nonuse (i.e., a section 71 declaration of use) between the fifth and sixth years of registration and between each successive ninth and tenth years of registration for a registered extension of protection (Madrid Protocol).

Any such deadline falling between March 27 and May 31, inclusive, “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 was due to the COVID-19 outbreak as defined in subsection (b)” of the Notice.

Required Statement Related to the COVID-19 Outbreak:

Subsection (b), in turn, requires that the statement accompanying the late filing indicate that “a practitioner, applicant, registrant, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak.”  Such a person could be affected, according to the Notice, by situations “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 outbreak materially interfered with timely filing or payment.” 

Matters Before the Trademark Trial and Appeal Board:

In addition, the Notice allows those appearing before the Trademark Trial and Appeal Board to request (in ex parte appeals) or move (for trial cases such as oppositions or cancellations) for an extension or reopening of time if the COVID-19 outbreak has prevented or interfered with a filing before the Board. 

Waiver of Petition Fee:

In cases where a trademark applicant or owner misses a deadline falling on May 31 or earlier due the COVID-19 outbreak and leading to abandonment of an application or cancelation/expiration of a registration, the USPTO will waive the petition fee to revive the abandoned application or to reinstate the canceled/expired registration.  To revive an abandoned application, applicants should use the Trademark Electronic Application System (TEAS) “Petition to Revive Abandoned Application” document.  To reinstate a canceled/expired registration, trademark owners should use the TEAS “Petition to the Director” form.  In each case, the petition must include a statement under subsection (b) discussed above that the delay in filing or payment was due to the COVID-19 outbreak.  The USPTO will also treat such a statement as a request for a waiver of the petition fee under 37 C.F.R. § 2.6(a)(15).

In announcing the additional extensions, the USPTO noted that it will continue to evaluate the evolving situation around the COVID-19 pandemic and its impact on USPTO operations and stakeholders.  Trademark-related inquiries regarding the April 28 Notice can be directed by email to TMPolicy@uspto.gov or by telephone to the Trademark Office of Petitions at (571) 272-8950.  TTAB-related inquiries may be addressed by email to TTABinfo@uspto.gov.  

Eric R. Moran is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm’s Trademark, Unfair Competition, Advertising Law & Copyright Practice Group. Mr. Moran has experience in all areas of intellectual property law, with particular emphases on litigating and counseling clients on patent, trademark, and domain name issues. moran@mbhb.com 

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[i] Notice from Andrei Iancu, Director of the USPTO, for “Notice of Extended Waiver of Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act and Other Relief Available to Trademark Applicants and Trademark Owners” (April 28, 2020), available at https://www.uspto.gov/sites/default/files/documents/TM-Notice-CARES-Act-2020-04.pdf

[ii] USPTO announces extension of certain patent and trademark-related timing deadlines under the Coronavirus Aid, Relief, and Economic Security Act, USPTO, https://www.uspto.gov/about-us/news-updates/uspto-announces-extension-certain-patent-and-trademark-related-timing (last visited May 1, 2020)