Updated April 1, 2020
The Director of the United States Patent and Trademark Office issued a notice on March 31, 2020, that the due date for any of the following filings that falls between March 27, 2020 and April 30, 2020, may be extended for thirty (30) days, provided that the filing is subsequently made within such extended period and accompanied by a statement that the delay in filing (or payment) is “due to the COVID-19 outbreak.”
- A response to an Office Action (including the filing of a Notice of Appeal)
- A Statement of Use or a Request for an Extension of Time to File a Statement of Use
- A Notice of Opposition or a Request for an Extension of Time to File an Opposition
- A trademark application claiming the priority of a foreign application (whether filed directly with the USPTO or through the Madrid Protocol)
- A request to convert a Madrid Protocol application to a national application
- An Affidavit of Use or a renewal application (whether related to a registration obtained nationally or through the Madrid Protocol)
For the delay in filing to qualify for the extension, the delay must occur because the “practitioner, applicant, registrant or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, 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.”
If you believe that you and your trademark matter qualify for an extension of time under the foregoing concession, please contact the trademark professionals of Faegre Drinker at your earliest convenience. In the interim, we will continue to monitor this situation and post updates to this blog post.
Original Post, Dated March 24, 2020
As we continue to watch the effects of COVID-19 on our communities, it is impossible not to be struck by the scale of school closures and shuttered businesses, as well as the swift transitions made to accommodate mass teleworking nearly overnight. We have seen various government agencies offering late fee forgiveness, deadline extensions, and a plethora of other accommodations in light of the unique challenges presented by the novel virus.
When considering how COVID-19 might impact trademarks here in the United States, there are two important things to keep in mind:
- The USPTO has NOT Suspended Filing Deadlines: As of the date of this writing, the USPTO has elected to continue operations and is requiring all filings to be submitted by the applicable deadlines. This applies equally to all types of filing deadlines including declarations of use, renewals, statements of use, submissions in connection with Trademark Trial and Appeal Board proceedings, and responses to Office Actions. In this regard, the USPTO is still accepting trademark filings and all other ordinary submissions. Indeed, due to the Trademark Office’s remote work infrastructure, we do not anticipate a complete closure of the Trademark Office unless the circumstances surrounding COVID-19 significantly worsen.
- The USPTO HAS Acknowledged That Some Deadlines Might Be Missed: While the USPTO has not categorically extended or suspended deadlines in the same manner as some other government agencies, the Trademark Office has acknowledged that circumstances surrounding COVID-19 represent an “extraordinary situation” within the meaning of 37 CFR 1.183 and has elected to waive all associated petition fees. As such, if certain deadlines are missed as a result of COVID-19 related circumstances, it may be possible to submit a Petition to the Director free of charge to help ensure the relevant trademark rights are not waived, abandoned, or allowed to expire. Such petitions must include a statement explaining how the failure to timely file resulted from the effects of the COVID-19 outbreak. Because underlying deadlines are not being altered, this petition must still be timely submitted (i.e. within two months of the issue date of the relevant notice of abandonment or cancellation, or six months from the date of abandonment, cancellation or expiration if such notice was not received). While this is a nice gesture on the part of the USPTO, the better approach is to avoid having to file such a petition, in view of the cost of preparing and submitting it, and the risk of the petition ultimately being denied.
The Faegre Drinker Intellectual Property Team is committed to our clients and contacts during this difficult time. As outlined in our previous post, our attorneys, consultants and professionals are just a phone call or email away, and we are embracing other technologies to stay connected in a virtual (and remote) world. We will continue to keep in touch via social media, this blog and the Faegre Drinker website. Of course, if you have questions please reach out to your contacts within our team.