Elizabeth M. Sbardellati

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USPTO Extends Certain Deadlines Under CARES Act

April 29, 2020Client Alert

Updated as of April 29, 2020

On April 28, 2020, the USPTO issued a further extension of certain trademark filing and fee deadlines* to June 1, 2020. The April 28 Notice supersedes the March 31 Notice and affects trademark filing and fee deadlines from March 27, 2020, to May 31, 2020. 

As with the March 31 Notice, deadlines are not automatically extended. Rather, the extension applies only where an applicant, registrant, lawyer or other person associated with the relevant filing has been “personally affected” by COVID-19 such that the outbreak materially interfered with the ability to timely file and/or pay. Accordingly, any filer relying on the extension must include a statement with its filing explaining that the delay is due to COVID-19. The April 28 Notice carries forward the March 31 Notice’s broad examples of circumstances that will be considered to satisfy the “personally affected” requirement. Accordingly, we continue to anticipate that the USPTO will interpret the requirement with leniency.

*The affected deadlines have not changed. The Trademark Trial and Appeal Board (“TTAB”) has not issued a suspension of proceedings due to the COVID-19 outbreak.  Accordingly, deadlines in ongoing TTAB proceedings remain unaffected by the April 28 Notice. Nevertheless, to the extent the COVID-19 outbreak has prevented or interfered with a TTAB filing deadline, the affected may file a request or motion for extension or reopening of time on that basis.
 

On March 31, 2020, the Director of the United States Patent and Trademark Office (USPTO) issued a Notice extending certain trademark-related filing deadlines* where the filer was/is unable to meet the deadline due to the COVID-19 outbreak. 

The USPTO has extended such deadlines for a period of 30 days from the initial date the filing was due. For example, if the deadline to respond to an office action fell on March 27, 2020, the trademark applicant now has until April 26 to submit its response. However, the extension applies only where an applicant, registrant, lawyer or other person associated with the relevant filing has been personally affected by COVID-19 such that the outbreak materially interfered with the ability to timely file. 

Accordingly, any filer relying on the extension must include a statement with its filing explaining that the delay in filing is due to COVID-19. The Notice sets forth a number of circumstances that satisfy the “personally affected” requirement, including office closures, cash flow interruptions, inaccessibility of relevant files or other materials, travel delays and/or illness, indicating that the USPTO is likely to interpret the requirement broadly and with leniency. 

Importantly, the Trademark Trial and Appeal Board (“TTAB”) has not issued a suspension of proceedings due to the COVID-19 outbreak. While the deadline to file a notice of opposition and/or request an extension of time to file a notice of opposition is covered by the USPTO’s Notice, deadlines in ongoing TTAB proceedings are unaffected. To the extent the COVID-19 has prevented or interfered with a TTAB filing deadline, parties may file a request or motion for extension or reopening of time, as provided for under the TTAB manual of procedure. Practitioners anticipate that such requests and/or motions will be liberally granted.

The USPTO remains open for trademark and TTAB filings. Other than as set forth in the Notice, no other deadlines have been extended or waived at this time. To the extent the USPTO expands its Notice, we will provide an update.

*Deadlines Included in March 31, 2020, USPTO Notice

  • Response to Office Action
  • Notice of Appeal from Final Refusal
  • Statement of Use (or request for extension of time to file statement of use)
  • Notice of Opposition (or request for extension of time to file a notice of opposition)
  • Priority Filing (under 15 USC 1126(d)(1) and 15 USC 1141g)
  • Transformation of Extension of Protection to the United States into a US application (under 15 USC 1141j(c))
  • Affidavit of Use of Excusable Nonuse (under 15 USC 1058(a) and 15 USC 1141k(a))
  • Renewal Application