Last week on March 31, 2020, the USPTO announced it was providing extensions of time on some trademark deadlines due to circumstances related to the COVID-19 pandemic. Yesterday, the USPTO issued more guidance about its recent announcement. Some of you may wonder why the USPTO waited so long to provide relief to trademark owners. Until Congress passed the CARES Act on Friday, March 28, 2020, the USPTO did not have authority to act, because all of the USPTO deadlines are set by federal statute.
Here’s What You Need to Know About the USPTO Deadline Extension
As of April 28, 2020, the USPTO has updated its policy regarding the deadline extension. The USPTO is now extending the following select deadlines to June 1, 2020 if the original due date fell between March 27 and May 31, 2020, if the reason for the delay is due to the COVID-19 outbreak. If you can timely file, we recommend that you do. Trademark owners must demonstrate that the COVID-19 outbreak materially interfered with the timely filing or the ability to pay. Examples of situations which could qualify for an extension are the closure of a trademark owner’s or its counsel’s office, lack of access to files or specimens of use, personal or family illness, cash flow interruptions, or other similar circumstances. If these circumstances exist, then the June 1 extension of time applies to the following filings:
- Response to Office Action, including Notice of Appeal;
- Statement of Use or Request for Extension of Time to File Statement of Use;
- Section 8 Declaration of Continued Use;
- Section 9 Renewal Application;
- Notice of Opposition or Request for Extension of Time to File Notice of Opposition; and
- Foreign priority filings to file U.S. application based on home country registration.
We recommend the pertinent circumstances be provided in the miscellaneous statement box of the relevant form, and if possible, signed by trademark owner. The USPTO states that the forms will be available even after the original due date and that per the usual USPTO policy, if the extended due date falls on a Saturday, Sunday or holiday then the filing will be due on the next business day.
We will continue to monitor this situation and keep you apprised if there are updates. If you need assistance with any trademark filings or have questions about what filings qualify for the extended due dates, please feel free to contact us with any questions or concerns to be sure your rights are not lost.
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a focus on trademarks and copyrights, as well as advertising issues related to promoting clients’ brands. Stacey has been recognized by her peers as a Super Lawyer® for her outstanding knowledge and services in intellectual property law. She can be reached at firstname.lastname@example.org.
Stacey is also the founder and lead instructor of Trademarkabilities™, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be efficient and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.