USPTO Announces Extension for Trademark Responses Affected by Coronavirus

In response to the Coronavirus Aid, Relief, and Economic Security (“CARES”) Act, the United States Patent and Trademark Office (“USPTO”) on March 31, 2020 announced an extension of time to file certain trademark-related filings and fees.

What Trademark deadlines are being extended?

The announcement from USPTO Director Iancu explained that the unprecedented COVID-19 pandemic prejudices the rights of trademark applicants, registrants, and owners. The announcement went on to provide that parties unable to meet trademark-related deadlines due to the Coronavirus outbreak would be granted a 30-day extension for certain deadlines falling between March 27th and April 30th of this year.

How can a Trademark applicant request the 30-day extension?

The USPTO has stated that the 30-day extension will be provided to any filing accompanied by a “statement that the delay in filing or payment was due to the COVID-19 outbreak…” This provision applies to practitioners, applicants, registrants, or other persons associated with the filing who were personally affected by the outbreak.

Fortunately, the USPTO has broadly defined such personal reasons to include any “circumstances” that interfered with timely filing or payment, including office closures, inability to access files or other materials, cash flow interruptions, personal or family illnesses, and travel delays. Any fees due with the filing would still be due at the time of filing, but the extension may be requested without payment of any additional fee.

What Trademark filings does the 30-day extension apply to?

The 30-day extension will apply to any of the following filings:

i. 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);

ii. 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);

iii. 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);

iv. Priority filing basis under 15 U.S.C. § 1126(d)(1) and 37 C.F.R. § 2.34(a)(4)(i);

v. Priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c);

vi. 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);

vii. Affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a);

viii. Renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; and

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

In the event that an applicant’s situation is not covered in the list above, the USPTO has said that a request (in ex parte appeals) or motion (for trial cases) for an extension or reopening of time may be made if the COVID-19 outbreak has prevented or interfered with the filing.

Lastly, the USPTO has stated that existing procedures which are usually available to revive an abandoned application or reinstate a canceled or expired registration are still available to those whose applications and registrations were abandoned, canceled, or expired due to that party’s inability to timely respond to a USPTO communication because of the Coronavirus outbreak.

If you are an Arizona business or business owner looking to trademark your brand name or logo, or have received USPTO correspondence requiring you to respond within the time period mentioned above, feel free to give our office a call at (602) 222-5542 or send us a confidential e-mail using the contact form to the right of this page.

Ben Bhandhusavee is the Managing Attorney for BHANDLAW, PLLC, a Phoenix business and technology law firm working with start-up companies, creative intellectual property, Internet and digital media matters, and complex corporate M&A and technology transactions.  Ben can be reached at (602) 222-5542 or by e-mail at bbhand@bhandlaw.com