Extended USPTO Relief Based on the CARES Act

The United States Patent and Trademark Office announced yesterday that it will extend the relief it is offering under the Coronavirus Aid, Relief and Economic Security Act (CARES Act). These new measures supersede the ones it previously announced on March 16 and 31, 2020. The Office will now consider certain filings and payments originally due between March 27 and May 31, inclusive, to be timely submitted if made on or before June 1, 2020, provided that they includes a statement that the delay was due to the COVID-19 outbreak.

The office will accept that the outbreak caused the delay if a person associated with making the submission was personally affected by the outbreak. Affected persons could include a trademark practitioner, an applicant or a registrant. The statement may cite a variety of reasons, for example: an office closure of an affected person due to COVID-19, an interruption in cash flow, a lack of access to needed files, a delay in travel, or COVID-19 related illness of an affected person or a family member of the affected person.

This extension may be used in connection with the following types of submissions:

• Claims of priority under the Paris Convention based on a foreign application or registration;
• Claims of priority under the Madrid Protocol based on a basic application or registration;
• Responses to Office actions;
• Requests for Reconsideration of Final Refusals
• Ex Parte Appeals to the Trademark Trial and Appeal Board from Final Refusals;
• Notices of Opposition or Requests for Extensions of Time to file Notices of Opposition;
• Statements of Use or Requests for Extensions of Time to File Statements of Use;
• Affidavits or Declarations of Use or Excusable Non-Use (due the sixth and every ten years after registration);
• Applications to Renew (due every tenth year after registration); and
• Transformations of Extensions of Protection to the United States into United States Applications.

Furthermore, based on the same statement, the Office will waive any petition fee to revive abandoned applications or reinstate canceled or expired where that lapse occurred on or before May 31. These petitions must still be filed within two months of the notice of the status change or otherwise in accordance with the timing required by the Trademark Rules, so some of these deadlines may nevertheless fall before June 1, 2020.

Under Section 12004(a) of the Coronavirus Aid, Relief and Economic Security Act (CARES Act) passed on March 27, 2020, the Office has expanded authority to toll, waive, adjust or modify deadlines set in the Trademark Act and regulations based on it. This authority will last as long as the state of emergency resulting from the outbreak of COVID-19, and for another sixty days thereafter, for up to a maximum total period of two years, so it is possible that the Office will issue additional or extended relief after June 1, 2020.

We are continuing to closely monitor the effect of COVID-19 on trademark operations around the world and will continue to keep you informed of any important developments that affect our clients. Please feel free to reach out to us if you have any questions or if you need additional trademark support in light of the current crisis. Although we have moved to remote work in line with social distancing guidelines, our team’s operations have not been affected by the outbreak and we would be more than happy to provide any assistance or guidance you may need.

If you have any questions regarding this update or wish to discuss it in more detail, please contact any of the following Winterfeldt IP Group team members:

Brian Winterfeldt, brian@winterfeldt.law, +1 202 903 4422

David Rome, david@winterfeldt.law, +1 847 757 3790

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