On March 31, the U.S. Patent and Trademark Office (USPTO) issued a Notice extending the deadlines to file certain trademark-related documents and fees in light of the COVID-19 outbreak. The Notice provides a 30-day extension for certain filings that would have been due on or between March 27, 2020 and April 30, 2020 (Affected Period).
It is important to note that not all trademark-related filings have been extended, and additional requirements will be necessary to gain the benefit of these extensions. Below is a summary of how the USPTO’s latest Notice will impact pending applications, registered marks and matters pending before the Trademark Trial and Appeal Board (TTAB).
Deadlines Affecting Pending Trademark Applications
The following deadlines falling in the Affected Period have been extended by 30 days:
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responding to Office actions
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filing a notice of appeal from a final refusal
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submitting statements of use or requesting an extension of time to file a statement of use
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for applications filed under § 44(d), the six-month deadline to claim priority of an earlier-filed foreign trademark application
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for extensions of protection filed under § 66(a), the six-month deadline to claim priority of an earlier-filed international registration
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for extensions of protection filed § 66(a), the three-month deadline to request transformation of the § 66(a) application to an application filed under § 1 (use or intent-to-use) or § 44 (foreign application)
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filing a notice of opposition or requesting an extension of time to oppose a pending application.
Deadlines Affecting Registered Trademarks
The following deadlines falling in the Affected Period have been extended by 30 days:
Deadlines for Pending TTAB Proceedings Are Not Automatically Extended
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The deadline to file a notice of opposition or requesting an extension of time to oppose a pending application has been extended by 30 days if it falls within the Affected Period.
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Current deadlines in pending ex parte appeals or contested oppositions or cancellations have not been automatically extended:
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ex parte appeals — applicants may file requests for an extension or to reopen a time period, as appropriate
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oppositions/cancellations — parties can file a motion to extend or motion to reopen, as appropriate.
Petitions to Revive Abandoned Applications / Revive Cancelled or Expired Registrations – Fees Waived
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If an application was abandoned or a registration was cancelled as a result of an inability to respond to a communication from the USPTO because of the COVID-19 outbreak, applicants and registrants may take advantage of the existing procedures to revive an application or reinstate a cancelled/expired registration.
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Fees associated with these petitions to revive/reinstate have been waived.
Required COVID-19 Statement
In order to gain the benefit of the extensions or waivers noted above, the filings or petitions must include a statement explaining that the delay in filing and/or payment was due to the COVID-19 outbreak. As outlined in the Notice, a delay is acceptable if a “practitioner, applicant, registrant, or 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 to files or other materials, travel delays, personal or family illness, or similar circumstances.”
