The United States Patent and Trademark Office announced yesterday that it will continue to offer more limited relief to customers and stakeholders who may be affected by the COVID-19 pandemic. The broader measures announced on April 28, 2020 will expire on May 31, 2020.
Going forward, the Office will only afford relief as needed on a case-by-case basis. Deadlines falling on and after June 1 will remain in effect, but stakeholders may submit either a petition to revive the application or a petition to the director, as applicable, setting forth why a failure to meet certain deadlines should be excused due to COVID-19. This applies to failures to timely:
- Submit responses to Office actions;
- Pay fees in response to Office actions;
- File statements of use by the final 36-month statutory deadline, or
- Meet any other statutory deadlines, resulting in the abandonment of an application or the cancellation or expiration of a registration.
These petitions are, however, subject to their own timeliness requirements (see 37 CFR §§ 2.66(a), 2.146(d)) and under most circumstances must be filed within two months of the applicable notice of abandonment, cancellation or expiration. Until June 30, 2020, the Office will continue to waive the fees for these submissions, provided that they are made with a statement that the underlying lapse was “due to the COVID-19 outbreak.” Due to the limited availability of fee waivers, it may be prudent to seek relief promptly as soon as one learns of a missed deadline, instead of waiting for a notice of abandonment or cancellation or otherwise waiting for the petition deadline.
Importantly, the Office is not exercising its power under the Coronavirus Aid, Relief and Economic Security Act (CARES Act) to issue another broad extension of statutory deadlines beyond the June 1, 2020 deadline set in its previous relief measures. It is also not clear whether relief be available under the inclusive but clearly defined circumstances the Office previously articulated.
The Office states that it “recognizes that the COVID-19 pandemic continues to impose various hardships, especially on small businesses and individuals, and will continue to evaluate the evolving situation around the COVID-19 outbreak and the impact on the [Office’s] operations and stakeholders.” Under Section 12004(a) of the CARES Act passed on March 27, 2020, the Office still 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 30, 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, firstname.lastname@example.org, +1 202 903 4422
David Rome, email@example.com, +1 847 757 3790