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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.

May 1, 2020

USPTO Issues Updated Guidance on Deadline Extensions and Monetary Relief

On Tuesday, the US Patent and Trademark Office (USPTO) issued updated guidance related to extensions of time for certain trademark filing deadlines and monetary relief for some trademark owners via the authority granted to the USPTO by the Coronavirus Aid, Relief, and Economic Security (CARES) Act.

The notice, issued on April 28, 2020, supersedes the USPTO’s earlier notices, issued on March 16 and March 31, 2020. For more information regarding the USPTO notice issued on March 31, 2020, see this alert.

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, including grace period deadlines for such affidavits
  8. Renewal applications

Eligible filings submitted in connection with deadlines that occur between and inclusive of March 27, 2020, and May 31, 2020, will be considered timely if they are filed on or before June 1, 2020, and contain the required statement that the delay in filing or payment was due to the COVID-19 outbreak.

The extension period under the newly issued notice is noteworthy in its changes from the prior notice; the prior notice granted a 30-day extension calculated from each deadline occurring in the then-relevant period. In contrast, the current notice instructs that the duration of the extension is unique to each deadline. For example, an office action deadline of March 27, 2020, may be eligible for an extension of over 60 days, whereas an office action deadline of May 30, 2020, would only be eligible for a two-day extension pursuant to the most recent notice (not taking into consideration rules regarding deadlines that fall on Saturday, Sunday, or federal holidays).

The notice continues to have the consequence of potentially extending the time for opposition of published applications, which, in turn, will result in a delay in issuing registration rights for affected filings.

The USPTO kept, but did not elaborate on, the requirement that persons utilizing the deadline extension for any one of the aforementioned filings must provide a written statement that the delay in filing or payment was “due to the COVID-19 outbreak,” a qualification that is, at best, vague.

People covered by the notice are still described broadly to include individuals associated with accomplishing the filing or fee payment (e.g., practitioners, applicants, and 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 the person was affected by the COVID-19 outbreak must be provided at the time of filing. 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 the 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 this notice.

Fee Relief

The USPTO will continue to waive fees associated with a petition to revive an abandoned application or a petition to reinstate a canceled registration due to a failure or delay in filing or payment as a result of the COVID-19 outbreak. The fee waiver is only available to applications abandoned or registrations canceled on or before May 31, 2020. The petition must include a statement that the delay in filing or payment that resulted in the abandonment or cancellation was due to the COVID-19 outbreak, which serves as the request for a waiver of the petition fee. The petition must be filed no later than two months after the issue date of the abandonment or cancellation, or if no notice is received, then no later than six months after the trademark electronic records indicate the application is abandoned or the registration is cancelled.

Availability

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.

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;  Kaleigh Morrison, associate, at kmorrison@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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