Category Archives:Trademark Law

By Salvatore Fazio, Esq.

On April 28, 2020, United States Patent and Trademark Office USPTO director Andrei Iancu circulated a communication further extending USPTO deadlines to file certain trademark and patent-related documents or fees pursuant to Section 12004 of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act).

Deadline Extensions

The USPTO has further extended all deadlines which fall between March 27, 2020, and April 30,2020 until June 1, 2020 for any[1]:

Trademark

1. response to an Office action, including a notice of appeal from a final refusal, under 15 U.S.C. § 1062(b) and 37 C.F.R. §§ 2.62(a) and 2.141(a);
2. statement of use or request for extension of time to file a statement of use under 15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a)
3. notice of opposition or request for extension of time to file a notice of opposition under 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and§ 2.102(a);
4. priority filing basis under 15 U.S.C. § 1126(d)(l) and 37 C.F.R. § 2.34(a)(4)(i)
5. transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a);
6. affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. §2.160(a)
7. renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; or
8. affidavit of use or excusable nonuse under 15 U.S.C. § l 141k(a) and 37 C.F.R. § 7.36(b);

Patent

1. reply to an Office notice issued during pre-examination processing by a small or micro entity;
2. reply to an Office notice or action issued during examination or patent publication processing;
3. issue fee;
4. notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31;
5. appeal brief under 37 C.F.R. § 41.37;
6. reply brief under 37 C.F.R. § 41.41;
7. appeal forwarding fee under 37 C.F.R. § 41.45;
8. request for an oral hearing before the Patent Trial and Appeal Board (PTAB or Board) under 37 C.F.R. § 41.47;
9. response to a substitute examiner’s answer under 37 C.F.R. § 41.50(a)(2);
10. amendment when reopening prosecution in response to, or request for rehearing of, a PTAB decision designated as including a new ground of rejection under 37 C.F.R. § 41.50(b);
11. maintenance fee, filed by a small or micro entity;
12. request for rehearing of a PT AB decision under 3 7 C.F.R. § 41.52;
13. request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c) or 41.127(d); or
14. petition to the Chief Judge under 37 C.F.R. § 41.3.

It is important to note that the extended waiver of deadlines requires a statement from the practitioners, petitioners, applicants, trademark and patent owners, or other persons associated with the delayed filings and/or fees that they were personally affected by the COVID-19 outbreak. A non-exhaustive list of examples of reasons for COVID-19-related excusable delays includes office closures; cash flow interruptions; inaccessibility to files; travel delays; personal or family illness; or other similar circumstances materially interfering with timely filing or payment of fees. As to the form, the USPTO does not require such statements  to be verified or to be provided in affidavit or declaration form.

Waiver of Fees for Petitions to Revive

Trademarks

The Notice further provides that applicants or a registrants whose trademark applications have become abandoned or whose registrations were canceled/expired due to a COVID-19 related- inability to timely submit a filing or payment in reply to an Office communication having a due date of May 31, 2020 or earlier can elect for the USPTO to waive the petition fee to revive the abandoned application or reinstate the canceled/expired registration.

Patents

Similarly, if due to the COVID-19 outbreak  applicants and owners that were unable to timely submit a filing or payment in reply to an Office Communication having a due date of May 31, 2020 or earlier, causing their application to be abandoned or causing the termination of reexamination prosecutions, the UPSTO may waive the petition fee for filing a petition for the revival of such abandoned patent applications when the applicants or owners file a petition to revive and a provide a statement that the delay was due to the COVID-19 outbreak.

For any intellectual property-related questions including USPTO deadline extensions under the CARES Act, feel free to reach out to us via phone or email.

For the April 28, 2020 Notice of Waiver of Trademark-Related Timing Deadlines Under the CARES Act, click here.

For the April 28, 2020 Notice of Extended Waiver of Patent-Related Timing Deadlines under the Act and Other Relief Available to Patent Applicants and Patentees, click here.

For the USPTO’s answers to COVID-19-extension-related frequently asked questions:

Click Here for Trademarks

Click Here for Patents

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[1] Certain restrictions may apply to the deadline extensions listed. To view copies of the notices, please click on the links provided in this blog entry.