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Director Of Patent And Trademark Office Extends Certain Filing And Payment Deadlines Pursuant To CARES Act

The Coronavirus Aid, Relief, and Economic Security Act (the “CARES Act”), signed into law on March 27, 2020, provides various forms of relief to all facets of the economy in response to the President’s declaration of a national emergency on March 13, 2020.  The CARES Act affords temporary authority to the Director of the United States Patent and Trademark Office (“PTO”) during the COVID-19 emergency to extend the time to file certain documents and fees which would have been due on or after March 27, 2020.  However, not all deadlines are extendable, and even permitted extensions must be sought as related to the COVID-19 emergency.

Specifically, Section 12004(a) of the CARES Act empowers the PTO with temporary authority to “toll, waive, adjust, or modify” statutory deadlines established by the Trademark Act[1] for filing certain documents and paying certain fees during the emergency period[2] if the PTO finds that the emergency materially affects the functioning of the PTO; prejudices the rights of applicants, registrants, patent owners, or others appearing before the PTO; or prevents applicants, registrants, patent owners, or others appearing before the PTO from filing a document or fee with the PTO.  Indeed, the PTO has found that these conditions exist due to the COVID-19 pandemic.

Accordingly, on March 31, 2020, the PTO issued a Statement (entitled, “Notice of Wavier of Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act”) detailing the relief available to persons unable to meet trademark-related timing deadlines due to the COVID-19 pandemic.

Who is eligible?

Any practitioner, applicant, registrant, or other person associated with the filing or fee who was personally affected by the COVID-19 outbreak, including, without limitation, through 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.

What deadlines are applicable?

The deadline for any of the following filings may be extended:

  • Response to PTO action or notice of appeal (15 U.S.C. §1062(b) and 37 C.F.R. §§ 2.62(a) and 2.141(a));
  • Statement of use or request for extension of time to file a statement of use (15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a));
  • Notice of opposition or request for extension of time to file a notice of opposition (15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and § 2.102(a));
  • Priority filing basis (15 U.S.C. § 1126(d)(1) and 37 C.F.R. § 2.34(a)(4)(i));
  • Priority filing basis (15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c));
  • Transformation of an extension of protection to the U.S. into a U.S. application (15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a));
  • Affidavit of use or excusable non-use (15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a);
  • Affidavit of use or excusable non-use (15 U.S.C. § 1141k(a) and 37 C.F.R. § 7.36(b)); and
  • Renewal application (15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182).

If a filing before the Trademark Trial and Appeal Board (the “TTAB”) is not covered by the list above, the affected person may file a request or motion with the TTAB.

What is the new deadline?

The PTO will extend any of the above deadlines that fall between March 27, 2020 and April 30, 2020 for thirty (30) days from the initial deadline, provided that the filing is accompanied by a statement that the delay in filing or payment is due to the COVID-19 outbreak.

Is the PTO open?

Yes, the PTO is open for the filing of trademark and TTAB documents and fees.  Accordingly, the waiver set forth in the PTO’s Statement is only available if the delay was due to the COVID-19 outbreak.  The PTO continues to monitor the evolving situation and any further impact on PTO operations.

The PTO’s Statement also includes a reminder that the existing procedures to revive abandoned applications or reinstate a canceled/expired registration pursuant to 37 CFR §§ 2.66 and 2.146 remain available to applicants and registrants whose applications and registrations were abandoned or canceled/expired due to inability to timely respond to a trademark-related PTO communication as a result of the COVID-19 outbreak.  As provided in the PTO’s March 16, 2020 Notice, the fees for such petitions are waived.

If you have any questions regarding these provisions of the CARES Act and whether you may be eligible for relief, please contact Dan Holmander at DHolmander@apslaw.com or Joseph Avanzato at JAvanzato@apslaw.com.

[1] The term ‘‘Trademark Act’’ means the Act entitled ‘‘An Act to provide for the registration and protection of trademarks used in commerce, to carry out the provisions of certain international conventions, and for other purposes.’  15 U.S.C. 1051 et seq.

[2] As defined in the CARES Act, Sec. 12004(e), the “Emergency Period” includes the “duration of the portion of the emergency declared by the President pursuant to the National Emergencies Act on March 13, 2020, as a result of the COVID–19 outbreak (and any renewal thereof) beginning on or after the date of the enactment of this section and the 60 day period following such duration.”

About The Author

Kaitlin Kelly Smith

Kaitlin is a member of the firm’s litigation group, defending both individuals and businesses in a variety of civil matters in… Read More

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