On April 28, 2020, the United States Patent and Trademark Office issued a Notice further extending certain filing deadlines under the authority permitted through the Coronavirus Aid Relief, and Economic Security Act (CARES Act) to June 1, 2020. This notice superseded the Office’s previous notice dated March 31, 2020.
Those deadlines extended to June 1 include those pertaining to any:
- Response to an Office action, including a notice of appeal from a final refusal;
- Statement of use or a request for additional time to file a statement of use;
- Notice of opposition or a request for additional time to file a notice of opposition;
- Priority filing basis under 15 U.S.C. section 1126(d)(1) or 1141g;
- Transformation of an extension of protection to the United States into a U.S. application for registration;
- Affidavit of use or excusable nonuse; and
- Renewal application.
Any due date pertaining to such items that fell or falls between March 27, 2020 through and including May 31, 2020, inclusive, will now be considered timely filed if filed on or before June 1, provided that the ultimate filing is accompanied by a statement that the delay in payment or filing was due to the COVID-19 outbreak. This provision is to be read broadly; it can be based on any practitioner, registrant, applicant or other person associated with the filing or fee being personally affected by the outbreak, including office closures, cash flow interruptions, inaccessibility of documents or files, travel delays, or illness, such that it materially interfered with timely filing or payment.
Trademark Trial and Appeals Board matters are excluded from this automatic extension, but extension requests in such matters can be made on a case-by-case basis.
Additionally, the Notice extends the waiver of fees to revive abandoned applications or reinstate cancelled or expired registrations for any trademark applications and registrations that were abandoned, cancelled or expired due to the inability to timely respond to a trademark-related Office communication as a result of the COVID-19 emergency, which had been initially announced on March 16, to those that were abandoned, cancelled or expired on or before May 31, 2020.
Notwithstanding all of the above, the Trademark Office remains open for filing and the payment of fees. Thus, trademark owners should only utilize the above extension if they qualify for and otherwise need it, especially inasmuch as rights in connection with trademark registrations – from seniority to incontestability – will continue to be determined in connection with the filing date. Therefore, any filings should be made promptly when they are permitted and the filer is ready to move forward.
A copy of the full Notice can be found at this link.