USPTO Addresses Trademark Filing Delays Caused by the Impact of COVID-19

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While much of the focus of the Coronavirus Aid, Relief, and Economic Security (CARES) Act relates to economic stimulus, the Act also granted temporary authorization to the Director of the United States Patent and Trademark Office (USPTO) to “toll, waive, adjust, or modify” any patent- or trademark-related deadlines.

On March 31, 2020, the Director of the USPTO exercised that authority and announced that the USPTO was extending, by 30 days, the deadline for trademark applicants and registrants to submit any of the following filings with a deadline falling between and including March 27, 2020, and April 30, 2020, provided the delay in filing resulted because someone “associated with the filing or fee was personally affected by the COVID-19 outbreak”:

1. Responses to Office actions, including notices of appeal of a final Office action
2. Statements of use
3. Extensions of time to file statements of use
4. Notices of opposition
5. Extensions of time to file notices of oppositions
6. Priority filings
7. Transformations of extensions of protection to the United States into United States applications
8. Affidavits of use (for U.S. designations filed under the Madrid Protocol as well as those filed under Section 8 of the Lanham Act)
9. Renewal applications under Section 9 of the Lanham Act

The USPTO provided a non-exclusive list of how a “practitioner, applicant, registrant, or other person associated with the filing or fee” could be “personally affected ... through office closures, cash flow interruptions, inability to access files and other pertinent files, travel delays, personal or family illness, and other similar circumstances” in which the outbreak “materially interfered with timely filing or payment.”

Additionally, to the extent not expressly included in the list above, if the COVID-19 outbreak interfered with the filing of a document before the Trademark Trial and Appeal Board, a party may request or move for an extension or reopening of time as appropriate. A copy of the USPTO’s Notice can be found here.

The previous waivers announced by the USPTO remain valid, namely waivers of the fees required to petition to revive an abandoned application or reinstate a cancelled registration and the requirement for original signatures on certain forms.  In-person hearings before the Board remain suspended and will be handled virtually.

While trademark applicants, registrants, and TTAB parties should continue to make best efforts to adhere to current deadlines, the USPTO’s actions should provide some relief in these stressful times.