The United States Patent and Trademark Office (“USPTO”) does not typically provide relief from statutory deadlines and fees.  However, the USPTO has determined that the Coronavirus outbreak qualifies as an “extraordinary situation” for trademark applicants and owners, and has exercised its authority to waive certain petition fees necessary to revive an abandoned trademark application or reinstate a cancelled/expired trademark registration.  This will provide limited relief from the implications of the Coronavirus outbreak.

Next Steps to Protect Your Trademark

If you have a trademark application and/or registration that is deemed abandoned or cancelled because you were unable to respond to a USPTO communication as a result of the Coronavirus outbreak, the USPTO will waive any revival fees as long as a revival petition is timely filed with the USPTO along with a statement explaining how the failure to respond was due to the Coronavirus outbreak.

If you find yourself in this predicament, the Petition must be filed within two (2) months of the USPTO’s issuance of the notice of abandonment or cancellation.  However, if you did not receive a notice of abandonment or cancellation, any Petition must be filed within six (6) months of the date the trademark electronic records system indicates that your trademark application was abandoned or your trademark registration was cancelled/expired.

Finally, you should remain mindful that this relief “does not grant waivers or extensions of dates or requirements set by statute,” which will require trademark applicants and owners to continue to rely upon statutory deadlines and submit statutory fees to avoid any potential loss of trademark rights.

If you believe that you may have missed a trademark-related deadline as a result of the Coronavirus outbreak, you should:

• Identify all pending trademark applications and corresponding filing deadlines;
• Identify all federal trademark registrations and any accompanying maintenance deadlines; and
• Document how any failures to meet any of these deadlines were due to the effects of the Coronavirus outbreak.

Newmeyer Dillion stays on top of the issues that matter to your business.  If you have a trademark related issue, please reach out to Jonathan.King@ndlf.com.  For other COVID-19 issues, please refer to our COVID-19 Task Force page.