CARES Act and Trademark Deadlines

On March 27, 2020, the President signed the Coronavirus Aid, Relief and Economic Security Act (CARES Act) – This Act is to provide the various areas in which the government is providing emergency assistance and health care to individuals, families and businesses impacted by COVID-19.  Under the CARES Act, the United States Patent and Trademark Office (the “PTO”) has provided for the extension of certain trademark filing deadlines between March 27th and April 30th, as the PTO has determined that practitioners, applicants, registrants and others associated with PTO filings and fees are being impacted and may be unable to make timely filings due to the outbreak.

In particular, the PTO and the Trademark Trial and Appeal Board (TTAB) has provided that they are giving a 30-day extension for the following deadlines currently due between March 27, 2020 and April 30, 2020:

1. Response to an Office Action, including Notices of Appeal from the final Office Action under 15 U.S.C. § 1062(b) and 37 C.F.R. §§ 2.62(a) and 2.141(a);
2. Statement of Use or Request for Extension of time to file a Statement of Use under 15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a);
3. Notice of Opposition or Request for Extension of Time to file a Notice of Opposition 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and § 2.102(a);
4. Priority filing basis under 15 U.S.C. § 1126(d)(1) and 37 C.F.R. § 2.34(a)(4)(i);
5. Priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c);
6. Transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a);
7. An Affidavit of Use or Excusable Nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a);
8. A Renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182; or
9. Affidavit of Use or excusable nonuse under 15 U.S.C. § 1141k(a) and 37 C.F.R. § 7.36(b).

There are other extensions available as well.  For instance, TTAB  has provided that if COVID-19 has caused a delay in a filing not mentioned above, a request (in an ex parte appeal) before the Board or a motion (for trial cases) for a reopening of a case may also be made.

Also, if a trademark application was abandoned or a trademark registration was canceled/expired under any of the deadlines listed above (due to an inability to respond to a trademark-related Office communication by its original deadline) because of the COVID-19 outbreak, the PTO will waive the revival and reinstatement fees.

Thus, filing one of the above documents will be considered timely provided that the filing is made within 30 days of the original due date and provided that the filing includes a statement that the delayed filing or payment was due to the COVID-19 outbreak.  With regard to the type of circumstances that would be considered to effect a timely filing, the PTO has noted the following situations::

• 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 PTO and TTAB are providing information as to their extensions and information on frequently asked questions on its website at www.uspto.gov/coronavirus.  The PTO will continue to evaluate the situation and will report if additional measure or extensions are put in place.

If you have any questions, please contact Kimberly Grimsley kim@olivergrimsley.com or Jennifer Mumm jen@olivergrimlsey.com at Oliver & Grimsley.