USPTO Further Extends Certain Patent and Trademark-Related Timing Deadlines under the CARES Act to June 1, 2020
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).
The USPTO has further extended all deadlines which fall between March 27, 2020, and April 30,2020 until June 1, 2020 for any:
- 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);
- 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)
- 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);
- priority filing basis under 15 U.S.C. § 1126(d)(l) and 37 C.F.R. § 2.34(a)(4)(i)
- 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);
- affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. §2.160(a)
- renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; or
- affidavit of use or excusable nonuse under 15 U.S.C. § l 141k(a) and 37 C.F.R. § 7.36(b);
- reply to an Office notice issued during pre-examination processing by a small or micro entity;
- reply to an Office notice or action issued during examination or patent publication processing;
- issue fee;
- notice of appeal under 35 U.S.C. § 134 and 37 C.F.R. § 41.31;
- appeal brief under 37 C.F.R. § 41.37;
- reply brief under 37 C.F.R. § 41.41;
- appeal forwarding fee under 37 C.F.R. § 41.45;
- request for an oral hearing before the Patent Trial and Appeal Board (PTAB or Board) under 37 C.F.R. § 41.47;
- response to a substitute examiner’s answer under 37 C.F.R. § 41.50(a)(2);
- 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);
- maintenance fee, filed by a small or micro entity;
- request for rehearing of a PT AB decision under 3 7 C.F.R. § 41.52;
- request for rehearing of a PTAB decision under 37 C.F.R. §§ 41.125(c) or 41.127(d); or
- 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
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.
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:
 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.
Santucci Priore, P.L. client, Ernest Evans is a legendary musical entertainer known by his stage name “Chubby Checker.”
CHUBBY CHECKER – The Man – The Entertainer –The Pop Culture Legend
Early Years – Origins of the State Name “Chubby Checker”
Ernest Evans, p/k/a “Chubby Checker” was born in Spring Gulley, South Carolina and was raised in South Philadelphia where he would sing songs on street corners. While entertaining his boss “Tony A” with his songs while working in the poultry section of an Italian market, Mr. “A” coined him “Chubby,” a stage name he immediately adopted with courage and pride. The idea to add “checker” to his original nickname, was inspired by Dick Clark’s wife during a recording session.
The only song to hit #1 twice.
Chubby Checker first gained national prominence in 1960, when his recording of The Twist shot to #1 on the Billboard Magazine “Hot 100” singles chart. It remained on the chart at #1 for eighteen weeks. In 1961, Chubby Checker’s original recording of The Twist reentered the “Hot 100” chart and reclaimed the #1 position by January, 1962. No other song before or since has reclaimed the #1 position after leaving the charts. Combining its 1960 success with its 1961-62 return, The Twist spent nine months on the “Hot 100” singles charts.
For the 50th anniversary of the “Hot 100” chart in 2008, Chubby Checker’s recording of The Twist was selected by Billboard Magazine as the # 1 song on its chart of all-time.
Doing the Twist – A Dance Never Forgotten
Chubby Checker’s performance of The Twist in 1960 on “Dick Clark’s American Bandstand” and on the “Ed Sullivan Show” in 1961, spurred an international dance craze in the early 1960’s. Fifty years later, the song is still played. People, from toddlers to seniors, are still doing “The Twist.”
Continued Commercial Success
Chubby Checker’s commercial success continued with the song Let’s Twist Again, for which he won the first Grammy Award for “Best Rock Performance” ever in 1961. Then his recording of Pony Time hit #1 on the “Hot 100” chart in 1962.
Chubby Checker was also featured in several feature films and television appearances, including:
The film Twist Around The Clock in 1961
The film Don’t Knock The Twist in 1962
The film Spider-Man 3 in 2007
The concert and video for the Rock and Roll Hall of Fame Feelin’ Alright in 2009
ABC’s TV show Dancing on Ice in 2010
AMC’s TV show Mad Men in 2007
Chubby Checker adheres to a fairly aggressive performance schedule, still to this day with his group Chubby Checker and the Wildcats. They are booked through Paradise Artists in California: http://paradiseartists.com/
Law firm of SANTUCCI PRIORE, P.L. and Attorney Michael I. Santucci www.500law.com
Santucci Priore, P.L. is a Fort Lauderdale, Florida based law firm that has handled intellectual property, entertainment and commercial litigation matters all over the United States, and trademark and patent matters worldwide. See “15 Facts About the Firm” https://500law.com/15-facts/
Michael Santucci is dedicated to protecting and nurturing entrepreneurs, small business owners, artists and entertainers inspired by his experience growing up in the music business as a child. Michael Santucci has handled litigation and business transactions involving musical artists and companies such as Universal Music, Universal Studios, Hewlett-Packard, Warner/Chappell and Warner Brothers, Bob Marley, Ultra Music Festival, Gloria and Emilio Estefan, Jenifer Lopez, 50 Cent and Timbaland. Michael Santucci is responsible for thousands of trademarks and registrations throughout the world.
In 2002, Michael Santucci tried a case against The Walt Disney Company with co-counsel Willie E. Gary, and the late Johnny Cochran in which they obtained a record Two Hundred Forty Million Dollars ($240,000,000) for their clients, entrepreneurs Edward Russell and Nicholas Stracick of All Pro Sports Camps, involving Disney’s Wide World of Sports. See https://500law.com/practice/our-cases/
Santucci Priore, P.L., together with the Gary firm, has been representing Chubby Checker for several years including a recently-settled case against Hewlett-Packard for the unauthorized use of his stage name and trademarks. This legal team has vowed to send a message to the business community that they have to pay their fair share to artists and other icons of pop culture. Michael Santucci says: “This isn’t the 1950’s where exploitation of artists was commonplace. We will protect Chubby Checker and other grandparents of pop-music and culture to the fullest extent of the law.”
For more about Michael I. Santucci, see: https://500law.com/members/michael-santucci/
Law Offices of Gary, Williams, Parenti & Watson, P.L.L.C. and Attorney Willie E. Gary www.garylawgroup.com
The Law Offices of Gary, Williams, Parenti & Watson, P.L.L.C. is located in Stuart, Florida in a converted hotel at which attorney Willie E. Gary once washed dishes. The firm handles cases ranging from personal injury to discrimination to commercial litigation. The firm was founded by Willie E. Gary whose very humble beginnings and rise therefrom is a classic American success story.
Willie Gary is known as one of the nation’s best trial attorneys, and is responsible for various eight and nine figure jury verdicts, including the nine-figure jury verdict against Disney with co-counsel and intellectual property attorney Michael I. Santucci. Mr. Gary is credited with over 150 cases, each valued in excess of $1 million throughout his career. Gary was featured in Ebony magazine as one of the “100 Most Influential Black Americans.” Forbes Magazine named him one of the “Top 50 Attorneys in the United States.”
For more about Willie E. Gary, see: http://www.garylawgroup.com/gary/index.html