In response to the COVID-19 epidemic, the United States Patent and Trademark Office (“USPTO”) has taken the following steps to protect and offer relief to intellectual property applicants and owners affected by COVID-19.
Fee Waivers (March 16, 2020)
In a notice published on March 16, 2020, the USPTO determined that the effects of the COVID-19 outbreak rose to the level of an "extraordinary situation" within the meaning of 37 CPR 1.183 and 37 CPR 2.146. See full notice here on the USPTO website. In light of their determination, the USPTO is waiving petition fees associated with (1) reviving trademark applications or (2) reinstating cancelled/expired trademark registrations due to the owner’s inability to timely respond to a USPTO office communication as result of the effects of COVID-19.
For abandoned applications, the “Petition to Revive Abandoned Application” form should be used. For cancelled/expired registrations, the “Petition to the Director” form should be used. In both cases, the petition must include a statement detailing how the failure to respond to the USPTO office communication was due to the effects of the Coronavirus outbreak. Trademark applicants and owners must file the petitions no later than two (2) months from the issuance date of the notice of abandonment or cancellation.
Deadline Extensions (March 31, 2020)
On March 31, 2020, the took further steps to offer relief to trademark owners affected by the COVID-19 epidemic. The USPTO issued a notice regarding trademark related deadlines titled “Notice of Waiver of Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief and Economic Security Act.”
Pursuant to subsection 12004(a) of the Coronavirus Aid, Relief and Economic Security Act (“CARES Act”), the Director of the USPTO is given the authority to toll, waive, adjust or modify any timing deadline established by the Trademark Act (or its regulations promulgated thereunder) if the Director determines that the COVID-19 emergency has (1) materially affected the functioning of the Patent and Trademark Office (2) prejudiced the rights of applicants, registrants, patent owners or others appearing before the office or (3) prevented users from filing a document or paying a fee timely.
The Director exercised its temporary authority by acknowledging that the spread of the COVID0-19 virus has significantly impacted the operations of businesses and law firms and determined that an applicant or owner who is unable to meet trademark related timing deadlines may be eligible for a waiver of certain deadlines.
As such, the USPTO is now providing a thirty (30) day extension from the initial due date for filings that were due between and inclusive of, both March 27, 2020 and April 30, 2020. The following are filings afforded an extension:
A response to an office action, including a notice of appeal from a final refusal;
- A statement of use or request for extension of time to file a statement of us;
- A notice of opposition or request for extension of time to file a notice of opposition;
- A priority filing basis for international applications;
- A priority filing basis for extension of protection in the U.S. for international applications;
- A transformation of an extension of protection into a U.S. application;
- An affidavit of use or excusable nonuse (applicable to both after 5 years and 10 years from date of registration); or
- A renewal application
COVID-19 Accompanying Statement
It’s important to note that filings for the thirty (30) extensions must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. According to the USPTO, the statement need not be verified or provided in affidavit or declaration form. The statement may be provided in the relevant TEAS or ESTTA form or included in the document being filed.
Beware however, as providing such statements to the USPTO constitutes a certification under 37 CFR § 11.18(b) and violations of 37 CFR § 11.18(b) may be subject to sanctions pursuant to 37 CFR §§ 11.18(c) and (d).
Standard for determining whether the delay in filing or payment was due to the COVID-19 outbreak
According to the USPTO, A delay in filing or payment is due to the COVID-19 outbreak if the outbreak materially interfered with timely filing or payment. Circumstances that qualify as materially interfering with timely filing or payment include, without limitation,
- cash flow interruptions;
- lack of access to files or other materials;
- travel delays;
- personal or family illness;
- or similar circumstances.
The person affected by the outbreak may be a practitioner, applicant, registrant, or other person associated with the filing or fee (including your trademark lawyer).
Despite all office closures, the USPTO is still open for trademark and TTAB filings. We anticipate that further protections will be implemented as the circumstances around COVID-19 develops. We will continue to keep you apprised of all further actions the USPTO may take in response.