US Patent and Trademark Office Trademark Filling Extensions Update

COVID-19 continues to cause numerous cities and states to issue “stay at home orders” disrupting many business’ ordinary operations. As a result of the Coronavirus Aid, Relief, and Economic Security Act (the “CARES Act”), the United States Patent and Trademark Office (the “USPTO”) has extended certain filing deadlines for selected patent and trademark documents.

Specifically, for trademark filings, any of the following actions under certain sections may now qualify for a revised due date:

  • Response to a USPTO office action
  • Response to a notice of appeal from a final refusal
  • Statement of use or request for an extension of time for a statement of use
  • Notice of opposition or request for an extension of time for a notice of opposition
  • Priority filing basis
  • Transformation of an extension of protection to the United States into a US application
  • Affidavit of use or excusable nonuse
  • Renewal application

If the original filing deadlines for any of the above filings are due between March 27, 2020 and April 30, 2020, the USPTO has authorized a 30-day extension “provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.” The USPTO clarified that this means a practitioner, applicant, registrant, or other person associated with the filing or few was personally affected by the COVID-19 pandemic, “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.”

The USPTO has also waived the handwritten signature requirement for registration to practice before the USPTO in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings and payments by credit cards not made via the USPTO’s electronic filing system.

The USPTO maintains that it is still open and operational having made the necessary operational adjustment to keep its staff safe and working remotely. As well, in-person meetings, such as hearings and examiner interviews, are being conducted virtually by phone and video until further notice.

Written by Andrei Tsygankov and Stan Sater

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If you are a business that has questions about your trademark filings during this time, contact our Founders Legal team at [email protected] and [email protected].