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.
Has the United States Patent and Trademark Office (“USPTO”) rejected your trademark application and deemed it “merely descriptive?” If so, there are options other than appeal to the USPTO’s Trademark Trial and Appeal Board or complete abandonment of your trademark or service mark application.
Depending upon the extent and length of time of your company’s use of the mark, you could provide evidence that the mark has acquired “secondary meaning,” which is sometimes referred to as “acquired distinctiveness.” That would entitle your trademark to registration on the Principal Register even though your trademark, on its face, might be merely descriptive. Factors which are considered in proving secondary meaning are: 1) the monetary amount spent promoting or advertising the product or service under the mark; 2) the length of time the mark was used; 3) the monetary amount of sales of products or services bearing the mark; and 4) any evidence of consumer recognition of the mark such as a survey, or industry reports.
If this effort is unsuccessful, you still have options. The USPTO provides a separate Register for descriptive marks. It is called the “Supplemental Register.” In other words, descriptive marks can obtain a registration on this Supplemental Register until the owner of the trademark can show that it is no longer “merely descriptive” among relevant consumers. Five years of registration on the Supplemental Register generally creates a presumption of “secondary meaning” and, at such time, registration on the Principal Register may be available.
The benefits of a Supplemental Register Registration are that the filing date of the application is used for purposes of determining priority of use among users of the trademark, even though secondary meaning and actual registration on the Principal Register occurs years later. You might be able to obtain registration on the Supplemental Register until such time where you are able to prove that your mark has acquired “secondary meaning.” Registration on the Supplemental Register will also help to prevent others from obtaining registrations of similar marks in connection with similar goods who might be deterred by a the Supplemental Registration when a trademark search is performed.
The skilled trademark attorneys at the law firm of Santucci Priore, P.L. can assist you in proving secondary meaning or acquired distinctiveness, seeking registrations on both the Principal Register and the Supplemental Register, responding to USPTO Official Office Actions, amending trademark applications, appealing final refusals of trademark applications, filing international trademark applications, litigating validity and infringement issues before the USPTO’s Trademark Trial and Appeal Board, the U.S. Court of Appeals for the Federal Circuit and various federal and state courts, and domain name disputes before WIPO and other international bodies.
By: Michael Santucci, Santucci Priore, P.L., Managing Partner