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Our attorneys stay on top of changes in legislation, agency regulations, case law, and industry trends—then craft timely legal alerts to keep clients up to date on legal developments important to their business.

April 2, 2020

Proceed With Caution: USPTO Waives Certain Trademark-Related Deadlines Amid COVID-19

On Tuesday, in response to the authority granted to the US Patent and Trademark Office (USPTO) via the Coronavirus Aid, Relief, and Economic Security (CARES) Act, the USPTO issued “Notice of Waiver of Trademark-Related Timing Deadlines Under the Coronavirus Aid, Relief, and Economic Security Act.”

The notice provides guidance for persons who may be eligible for relief from certain filing deadlines.

The notice states that filing deadlines occurring between and inclusive of March 27 and April 30 for items listed below are extended 30 days from the original due date if the filings are “accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak” as further defined in the notice.

Filings Eligible for Deadline Extensions

  1. Office action responses
  2. Declarations of use and requests for extension of time to file declarations of use
  3. Notices of opposition or requests for extension of time to file notices of opposition
  4. Priority filing basis based on an earlier filed foreign application under Section 44(d)
  5. Priority filing basis for a filing under the Madrid Protocol
  6. Transformation of extensions of protection to the United States into US applications
  7. Affidavits of use or excusable nonuse
  8. Renewal applications

With respect to the publication period for applications, the notice has the consequence of potentially extending the time for opposition, which, in turn, will result in a delay in issuing registration rights for affected filings.

Perhaps the most perilous component of the notice is the requirement that persons electing to utilize the deadline extension for one of the aforementioned filings must provide a written statement stating that the delay in filing or payment was “due to the COVID-19 outbreak”—a qualification which is, at best, vague. 

Persons covered by the notice are described broadly to include individuals associated with accomplishing the filing or fee payment (e.g., practitioners, applicants, registrants). Additionally, “personally affected by the COVID-19 outbreak” is described to include “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.”

The written statement explaining how and why you were affected by the COVID-19 outbreak is provided at the time of making the filing. This means persons acting under the notice will provide their explanation for relief after the deadline expires. It remains unknown how critical the USPTO will be in reviewing these statements. Likewise, it is undetermined if the USPTO will reject some or any statements filed based in reliance on the notice, which could jeopardize rights of persons acting in reliance on the notice.       

We encourage affected parties to be cautious, critical, and mindful in choosing to exercise extension rights granted via the notice. Not until long after the COVID-19 pandemic passes will we start to see how the USPTO interprets the notice.  

The USPTO remains open during this time for filing trademark documents and fees. The attorneys in our Branding, Trademarks, & Copyrights Practice Area are experienced with the USPTO’s various e-filing systems and remain available to represent individuals and businesses in securing and maintaining trademark rights, even during this unprecedented time. 

If you have any questions regarding the content of this alert, please contact Liz Cominolli, Branding, Trademarks & Copyrights Practice Area co-chair, at ecominolli@barclaydamon.com;  Katie Markert, counsel, at kmarkert@barclaydamon.com; or another member of the firm’s Branding, Trademarks & Copyrights Practice Area.

We have a specific team of Barclay Damon attorneys who are actively working on assessing regulatory, legislative, and other governmental updates on non-trademark-related COVID-19 matters and who are prepared to assist clients. You can reach our COVID-19 Response Team at COVID-19ResponseTeam@barclaydamon.com
 

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