Under the new Coronavirus Aid, Relief, and Economic Security Act (CARES Act), the USPTO has announced 30-day extensions of time for filing certain patent- and trademark-related documents and paying certain required fees. As explained below, specified filings and responses with an original deadline between March 27 and April 30, 2020 maybe eligible for the 30-day extension of time and fee payment.
What Does the CARES Act Provide for Trademark Owners and Applicants?
Currently, the USPTO remains open for the filing of documents and fees. However, the USPTO has determined that the national emergency that has resulted from COVID-19 has prejudiced the rights of trademark owners, applicants, registrants and others appearing before the USPTO in trademark matters. In addition, COVID-19 has affected the operations of numerous businesses and law firms. Under the CARES Act, the USPTO has authorized extensions of time for certain filings and fee payments. The extensions are available to trademark owners and applicants if the delay in filing was due to COVID-19. A delay due to COVID-19 means someone associated with the filing or payment was personally affected by the outbreak through reasons such as office closure, cash flow interruption, inaccessibility of files, travel delay, personal or family illness, or similar circumstances that materially interfered with timely filing or payment. Please note the 30-day extensions are not automatically applied by the USPTO.
A statement that the delay in the filing or payment was due to the COVID-19 outbreak must be submitted with the filing or payment in order to qualify for the extension of time.
For trademarks, the 30-day extension of time is available for the following filings due between March 27 and April 30 (inclusive), among others:
- Response to an Office Action, including a Notice of Appeal from a final refusal;
- Statement of Use;Request for Extension of Time to File a Statement of Use;
- Notice of Opposition or Request for Extension of Time to file a Notice of Opposition;
- Section 8 Declaration of Use;
- Section 9 Application for Renewal;
- Affidavit of Use or Excusable Nonuse
Requests for an extension of a deadline for certain filings at the Patent Trial and Appeal Board or the Trademark Trial and Appeal Board may also be made when the COVID-19 outbreak has interfered with the ability to timely file.
Waiver of Certain Petition Fees due to COVID-19
Finally, in addition to the relief provided through the possible extensions of time, please be aware the USPTO has previously waived certain fees for revival or reinstatement due to abandonment because of the inability to timely reply due to the COVID-19 outbreak.
For trademark applications and registrations that were abandoned or canceled/expired due to inability to timely respond to a trademark-related Office communication as a result of the effects of the Coronavirus outbreak, the USPTO will waive the petition fee (set by regulation,rather than statute) to revive the abandoned application or reinstate the canceled/expired registration. In all cases, the petition must include a statement explaining how the failure to respond to the Office communication was due to the effects of the Coronavirus outbreak.