The United States Patent and Trademark Office (“USPTO”) does not typically provide relief from statutory deadlines.  However, if you failed to meet certain deadlines due to the COVID-19 break, you may be able to take advantage of recent action by the USPTO.   Extensions may be available, but only if the due date is between March 27^th – April 30^th and only as to certain kinds of deadlines.  Additionally, the USPTO has provided an additional 30 days to file certain trademark-related documents or to pay certain fees.

The recently enacted CARES Act provided the USPTO with the authority to toll, waive, adjust, or modify any timing deadline established by the Trademark Act, or any regulations promulgated thereunder, if the Director of the USPTO determines that the emergency:

1. Materially affects the functioning of the USPTO;
2. Prejudices the rights of applicants, registrants, trademark owners, or others appearing before the USPTO; or
3. Prevents applicants, registrants, owners, or others appearing before the USPTO from filing a document or fee with the USPTO.

NEXT STEPS TO PROTECT YOUR TRADEMARK RIGHTS

If you are unable to meet trademark-related timing deadlines due to the COVID-19 outbreak, you may be eligible for a waiver, and a 30 day extension.  To obtain this extension, you will need to accompany your filing with a statement that the delay in filing or payment was due to the COVID-19 outbreak.  A few common situations where relief is available include:

• Responding to an Office Action, including a notice of appeal from a final refusal;
• Filing a statement of use or request for extension of time to file a statement of use;
• Filing a notice of opposition or request for extension of time to file a notice of opposition;
• Filing an affidavit of use or excusable non-use; and
• Filing a renewal application.

A full list of situations subject to available relief can be found here.  Furthermore, in the event the COVID-19 outbreak has prevented or interfered with a filing before the Trademark Trial and Appeal Board (“TTAB”), you can also file a request or motion for an extension of time.

To obtain relief, your statement must demonstrate how you were impacted by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak is materially interfering with your timely filing or payment.

If you believe that you have a trademark-related deadline between March 27, 2020 and April 30, 2020 that may be affected by the COVID-19 outbreak, you should:

• Identify all pending trademark applications and corresponding filing deadlines between March 27, 2020 and April 30, 2020;
• Identify all federal trademark registrations and any accompanying maintenance deadlines between March 27, 2020 and April 30, 2020;
• Identify all deadlines at the TTAB between March 27, 2020 and April 30, 2020; and
• Document how you may be personally affected by the COVID-19 outbreak.

Newmeyer Dillion is tracking these trends and issues to counsel our clients whose businesses are at stake during these unprecedented circumstances. Please reach out to Jonathan.King@ndlf.com for trademark related questions, our COVID- 19 Task Force, NDCovid19Response@ndlf.com for any overarching questions, or contact our Walnut Creek office directly at 925.988.3200.