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IP Alert: USPTO Extends Select Trademark-Related Timing Deadlines Under the CARES Act

April 3, 2020

On March 31, the USPTO announced extensions to the time allowed to file certain trademark-related documents and to pay certain required fees that would have been due on or after March 27, 2020. This action was made in accordance with the Coronavirus Aid, Relief, and Economic Security (CARES) Act, which was enacted in response to the COVID-19 pandemic.

Specifically, the provisions of the CARES Act allow for the USPTO to toll, waive, adjust, or modify deadlines proscribed by the Trademark Act. This is a significant development because the USPTO has always been unable to modify due dates that are established by statute. The Director of the USPTO has determined that the national emergency created by the COVID-19 pandemic in the U.S. has prejudiced the rights of applicants, registrants, trademark owners and others in trademark matters before the USPTO as well as significantly disrupting the operations of the businesses and law firms that appear before the USPTO. As a result, the director has established a selection of due dates entitled to relief.

For the period beginning March 27, 2020, and extending through April 30, 2020, certain due dates can be extended by 30 days from the initial due date, as long as the filing is accompanied by a statement (provided below) that the delay in filing or payment was due to the COVID-19 outbreak. The due dates subject to this extension follow:

  • 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. §§ 2.101(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
  • Affidavit of use or excusable nonuse under 15 U.S.C. § 1141k(a) and 37 C.F.R. § 7.36(b)

In order to obtain the benefit of the 30-day extension afforded by this order, the filing must include this statement:

A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice if a practitioner, applicant, patent owner, petitioner, third party requester, inventor, 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.

For all other situations where the COVID-19 outbreak has prevented or interfered with a filing before the Trademark Trial and Appeal Board, a request (in ex parte appeals) or motion (for trial cases) for an extension or reopening of time, as appropriate, can be made.

For more information on this development, please contact Fitch Even partner Joseph T. Nabor, author of this alert.

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