Trademark Filing Extensions Due To The COVID-19 Crisis

Written By: Francelina Perdomo Klukosky

04/16/20
office filing cabinet

The United States Patent and Trademark Office (USPTO) is extending trademark filing and fees provided anyone seeking advantage of the extension shows that it has been personally affected by the COVID-19 outbreak. The USPTO will continue to accept new applications with examiners working remotely.

The USPTO extended the time to file certain trademark-related documents that would have been due between March 27, 2020, and April 30, 2020, by 30 days from the initial filing date. As a requirement for the extension, a statement must be submitted along with the filing explaining that the failure to meet the initial deadline was due to the COVID-19 outbreak.
 

[UPDATE: On April 28, 2020, the USPTO issued an announcement that it is extending certain filing deadlines to June 1, 2020.]

More importantly, the accompanying statement must show that the applicant, registrant, attorney, practitioner, or any other person associated with the filing or the payment of the fee was personally affected by the COVID-19 outbreak. Some examples of material interference resulting inexcusable delays in timely filing or payment of fees include office closures, travel delays, inaccessibility of files or other materials, cash flow interruptions, and personal or family illness.

Applicants, registrants, and their representatives must carefully evaluate the basis of the delay since false statements not only would render the filing untimely but can result in civil or criminal penalties.

The eligible filings are:

  • Responses to office actions, including notice of appeal from a final refusal;
  • Statement of use or request for extension of time to file a statement of use, affidavit of use, or excusable nonuse;
  • Notice of oppositions or request for extension of time to file a notice of opposition;
  • Priority filing basis;
  • Renewal applications.

If the COVID-19 outbreak has prevented a party from timely filing before the Trademark Trial and Appeal Board (TTAB) a motion or request for an extension of time should be made.

Fee Waivers
In addition to the filing extensions above, the USPTO also waived the fees for revival of abandoned applications or reinstitution of canceled or expired registrations pursuant to 37 CFR §§2.66 and 2.146 regarding trademark applications or registrations which were abandoned, canceled or expired due to inability of the applicant or registrant to timely take action as a direct result of the COVID-19 outbreak.

For additional information related to trademark filings, extensions, modifications and waivers pursuant to section 12004 of the CARES Act due to the COVID-19 outbreak please visit: https://www.uspto.gov/sites/default/files/documents/coronavirus_relief_ognotice_03162020.pdf

For further information and consultation please contact us.
 
 
 
 

about the authors

Francelina Perdomo Klukosky

Partner

Ms. Perdomo focuses her practice on intellectual property, corporate and commercial matters involving copyrights, trademarks, patents, false advertising, technology, digital media, music publishing, licensing, publicity rights, live events, table-top, and video games. Francelina represents authors, content creators and developers, music publishing, record and production companies in their ongoing business affairs. She often serves as outside general counsel to companies handling a variety of intellectual property and commercial matters.

View Profile