While the United States Patent and Trademark Office (USPTO) remains open for the filing of trademark documents and the payment of trademark-related fees during the current COVID-19 national emergency, it is using authority granted to it under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) to offer a waiver of certain filing and fee payment deadlines associated with obtaining, maintaining and enforcing federal trademark registrations. The USPTO has determined that the significant disruption of the operations of many businesses and law firms caused by the COVID-19 outbreak and/or the public and private measures taken to help contain the outbreak may prevent some
trademark owners from meeting impending filing and fee payment deadlines and thus threaten the protectability of valuable intellectual property.
Although virtually all trademark-related filing and fee payment is done electronically, information and supporting documents needed to make many filings still must be gathered and funds for payment of fees must be available. The temporary relief being offered by the USPTO recognizes that the current state of affairs may make it impracticable for some facing deadlines falling during the emergency to gather the necessary information or make payment. When this is the case, and provided that a sworn statement that a delay in filing or payment is due to
the COVID-19 outbreak accompanies the filing/payment when eventually made, the USPTO is waiving certain deadlines that fall on or after March 27, 2020 and through and including April 30, 2020.
Specifically, the waiver is available for the filing of:
- Responses to correspondence from the USPTO requiring action to keep an application or registration alive;
- Declarations of current use that must be filed to keep alive a U.S. registration or the extension of an International Registration to the U.S.;
- Applications for renewal of existing U.S. registrations;
- The submission of evidence of use of a mark in support of an
intent-to-use application or a request for an extension of time to submit such evidence;
- A claim of priority that entitles a trademark applicant to the priority date of an application in a foreign country or for an International Registration;
- A request to transform an application to extend an International Registration to the U.S. into a U.S. application; or
- A Notice of Opposition to a pending application or a request for an extension of time to oppose.
How long is the waiver in effect?
The waiver currently covers deadlines falling on or after March 27, 2020 and through and including April 30, 2020.
How long is the waiver?
The waiver currently extends the deadline for 30 days from the original date for filing/payment.
Who qualifies for the waiver?
Anyone facing one of the deadlines indicated above that files the required sworn statement that the delay was due to the COVID-19 outbreak when making the otherwise late filing/payment.
What are the criteria for determining if the delay is due to the COVID-19
If the COVID-19 outbreak personally affects either the trademark applicant, the owner of a registration, someone associated with the filing or fee in question (someone who has required information or whose involvement is otherwise necessary), or the trademark applicant or owner’s legal counsel, and as a result there is material interference with the ability to make a timely filing or payment, the delay can be attributed to COVID-19.
Examples of circumstances that can materially interfere with making a timely filing or payment include but are not limited to:
- Office closures;
- Cash flow interruptions;
- Inaccessibility of files or other
- Travel delays; or
- Personal or family illness.
What about other trademark-related deadlines?
Only the deadlines indicated above are covered by the waiver. For any other situations where the COVID-19 outbreak prevents or interferes with a timely trademark-related filing, a request for an extension or reopening of time can be made. For example, the waiver is not available for any of the deadlines associated with already commenced appeal, opposition or cancellation proceedings before the Trademark Trial and Appeal Board. However, it is not unreasonable to assume
that the Board will likely grant reasonable requests for extensions of any and all deadlines in those proceedings in light of the seriousness of the current national emergency.
What should you expect?
Much of the operations of the USPTO are conducted remotely and from locations spread across the country. So far we have not seen any material delays in the processing of filings made with the USPTO that can be attributed to the COVID-19 outbreak. For now, we expect the USPTO to continue processing filings as usual. Those relying on waivers for one or more filings will, of course, see a delay of at least the 30-days contemplated by the waiver. Also, the availability of a waiver for filing Notices of Opposition or requests for an extension of time to oppose will
certainly delay for at least 30 days the actual issuance of registrations arising from applications that were subject to opposition during the time when waivers were available.
What should you do?
Even if you believe that your ability to make a timely trademark-related filing during April 2020 is legitimately impacted by the COVID-19 outbreak, consider whether a delay in making the filing/payment is truly necessary before deciding to rely on a waiver. It is generally in your interest to have your trademark matters proceed through the USPTO as quickly as possible, so we suggest that you reserve reliance on a waiver for those situations where a timely filing/payment is genuinely not practicable for a COVID-19-related reason. We, at Calfee, always remain
available to counsel you through this national emergency waiver process whether or not we are currently handling your trademark matters.
What if you already missed a pre-March 27th deadline due to COVID-19?
If you missed a trademark filing or response deadline due to COVID-19 prior to March 27th, which has resulted in the abandonment of a trademark application or cancellation/expiration of a trademark registration, please reach out to Calfee or your regular trademark counsel. In certain cases, you may be able to revive the application or registration by filing a petition including a statement explaining how the failure to make the necessary filing or response was due to the effects of the COVID-19 outbreak. The USPTO has waived the petition fee associated
with all such petitions related to COVID-19.
Calfee invites you to visit our COVID-19 Resource Center containing First Alerts to help guide you through the challenges faced by individuals and organizations as a result of the novel coronavirus outbreak. We are committed to helping you meet the diverse and complex challenges and navigate the disruptions caused by this pandemic. Please check the COVID-19 Resource Center regularly for the latest updates, or subscribe to receive the most up-to-date Alerts sent directly to your email inbox. Please whitelist firstname.lastname@example.org and email@example.com to ensure these emails are delivered directly your inbox and not your spam filter.