Summary of USPTO trademark deadline extension opportunities in response to COVID-19

Late yesterday (March 31, 2020), the USPTO published a notice regarding trademark-related deadlines. The notice is titled: Notice of Waiver of Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief and Economic Security Act. See below for the full text, or here on the USPTO website. From the USPTO’s press release: “The United States Patent and Trademark Office (USPTO) today announced extensions to the time allowed to file certain patent and trademark-related documents and to pay certain required fees. These actions are an exercise of temporary authority provided to the USPTO by the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed by President Trump on March 27.”

The following is my summary of the key points from this notice:

• Sect. 12004 of the CARES Act signed last Friday provides the Director of USPTO with the authority to extend deadlines. (See article here.)
• The Director is exercising the authority in this notice released notice on 3/31/20.
• Top level summary: There are extensions available for trademark deadlines falling between March 27 and April 30, 2020, but such extensions are not automatically created or issued by the USPTO.
• The USPTO remains open and continues to operate, with many remote employees and electronic filings.
• In-person meetings, such as hearings and examiner interviews, are being conducted virtually by phone and video until further notice.  
• A person unable to meet due dates between March 27 and April 30, 2020 for essentially any USPTO trademark application or registration deadline, including
  • • Response to Office Action
    • Statement of use 
    • Extension of time 
    • Notice of opp or extension of time to oppose 
    • Renewal  
    • Affidavit of use or excusable non-use.
  • Filers can have deadline extended 30 days provided that they submit a statement that the delay in the filing or the delay in payment was due to the COVID-19 outbreak for one of several of reasons (that just about anyone should be able to qualify for – such as inaccessibility of files, travel delays, illness, office closures).
  • The extension of 30 days is from the due date, not from the time of filing the request for extension.
• An abandoned application may be revived, and the fee for the petition to revive will be waived (this was from the USPTO notice issued on March 16, 2020). 
• TTAB deadlines may be extended, but a request or motion for extension or reopening will likely need to be filed. 
• SUMMARY – there are options available for trademark applicants and registrants unable to meet deadlines during this COVID-19 coronavirus crisis.
  • USPTO is open for business and deadlines are not automatically extended 
  • This will create some unknowns.   
  • Those seeking to take advantage of the 30 day extensions will need to use particular language to specify and justify the extension request.  
  • It is not clear, but it is presumably better to file the extension request before the deadline expires.
  • USPTO online forms via TEAS may not be built for this – so that will create challenges. (Erik’s note – use “miscellaneous filed where possible to include language from the Notice about the extension request and basis for it.)
  • There is relief and I commend USPTO for acting quickly once the CARES Act played out.  But the rules are complicated, and docketing deadlines is already complicated, so use caution and care. 
• Erik’s note: As the USPTO publishes more info, or as filings are made and acted upon by the USPTO  regarding these extension requests, we will have more details and sample language and will try to share.
• Erik’s note: Stay safe!