On March 31, 2020, the U.S. Patent and Trademark Office (USPTO) announced that it is permitting trademark applicants to request extensions of the time allowed to file certain documents and to pay certain fees due to the ongoing COVID-19 emergency in the United States. USPTO director Andrei Iancu has exercised temporary authority granted to him under Section 12004(a) of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed into law on March 27. The USPTO remains open for the filing of trademark and TTAB documents and fees.
Our previous article on the USPTO’s exercise of authority under the CARES Act provided an overview of the USPTO’s very similar announcement to patent applicants. An important distinction between the two is the types of deadlines that the 30-day extension may be applicable to. For trademarks, these deadlines pertain to the due dates for filing the following documents and fees:
- 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.lOl(c) and§ 2.102(a);
- Priority filing basis under 15 U.S.C. § 1126(d)(l) 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 U.S. 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. § l 14lk(a) and 37 C.F.R. § 7.36(b)
Only trademark due dates between, and inclusive of, March 27, 2020 and April 30, 2020 are eligible for extension. The Trademark Notice published by the USPTO also states that a due date will be extended only by “30 days from the initial date it was due.” TTAB situations not enumerated above require a request (in ex parte appeals) or motion (for trial cases) for an extension or reopening of time. Additionally, the existing procedures to revive an abandoned application or reinstate a cancelled/expired registrations pursuant to 37 CFR §§ 2.66 and 2.146 remain available to applicants and registrants whose applications and registrations were abandoned or canceled/expired due to inability to timely respond to a trademark Office communication as a result of COVID-19.
To obtain an extension, the trademark filing must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. This means that the 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 outbreak materially interfered with timely filing or payment.”
As you are aware, things are changing quickly and there is no clear-cut authority or bright line rules. This is not an unequivocal statement of the law, but instead represents our best interpretation of where things currently stand. This article does not address the potential impacts of the numerous other local, state and federal orders that have been issued in response to the COVID-19 pandemic, including, without limitation, potential liability should an employee become ill, requirements regarding family leave, sick pay and other issues. It is important that practitioners keep up-to-date on the accompanying changes occurring at the USPTO.
*This alert is provided for information purposes only and does not constitute legal advice and is not intended to form an attorney client relationship. Please contact your Sheppard Mullin attorney contact for additional information.*