The previously-enacted CARES Act provided the United States Patent and Trademark Office (“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.

The USPTO has now provided additional relief from statutory trademark deadlines to take into account the impacts of the COVID-19 outbreak. In particular, the USPTO has further extended to June 1, 2020 any deadlines that would have expired between March 27, 2020 and May 31, 2020.

NEXT STEPS TO PROTECT YOUR TRADEMARK RIGHTS

The USPTO previously provided an additional 30 days to file certain trademark-related documents or to pay certain fees if the due date was between March 27, 2020 and April 30, 2020. However, the USPTO has now determined that the inability to meet trademark-related timing deadline between March 27, 2020 and May 31, 2020 due to the COVID-19 outbreak, may entitle you to an extension of your deadline until June 1, 2020. 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 nonuse; and
• Filing a renewal application.

If you have a trademark application and/or registration that is abandoned (or cancelled/expired) on or before May 31, 2020 due to an inability to respond to a USPTO communication as a result of the effects of the COVID-19 outbreak, the USPTO will continue to waive any revival fees as long as the revival Petition is timely filed with the USPTO on the appropriate Petition form along with a statement explaining how the failure to respond to the communication was due to the effects of the COVID-19 outbreak.

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 still also file a request or motion for an extension of time. A full list of situations subject to available relief can be found here.

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 May 31, 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 May 31, 2020;
• Identify all federal trademark registrations and any accompanying post-registration maintenance deadlines between March 27, 2020 and May 31, 2020;
• Identify all deadlines at the TTAB between March 27, 2020 and May 31, 2020; and
• Document how you may be personally affected by the COVID-19 outbreak in order to demonstrate the material interference of COVID-19 upon your ability to timely file or make payment to the USPTO.

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.