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April 13, 2020

CARES Act Impact on Trademark Office Filings

Coronavirus: Intellectual Property Advisory
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Introduction

The Coronavirus Aid, Relief, and Economic Security Act (CARES Act) offers help to trademark applicants and owners who may struggle to meet filing and response deadlines because of the COVID-19 outbreak. On March 31, relying on Section 12004 of the CARES Act, the Director of the US Patent and Trademark Office (USPTO) issued a Notice providing a 30-day extension to file certain trademark-related documents and to submit certain fees that would have been due between March 27 and April 30, 2020.1 However, anyone seeking to take advantage of an extension must have been unable to meet the original deadline because of the COVID-19 outbreak.

What Filings are Eligible?

The trademark filings eligible for the 30-day extension are:

  • Response to an office action;2
  • Statement of use or request for extension of time to file such a statement;3
  • Priority filing basis;4
  • Transformation of an extension of protection to the United States into a US application5
  • Section 8 affidavit of use or excusable nonuse;6
  • Renewal application;7 and
  • Section 71 affidavit of use or excusable nonuse.8

Certain Trademark Trial and Appeal Board (TTAB) filings are also eligible for the 30-day extension:

  • Notice of appeal from a final refusal to register a trademark;9 and
  • Notice of opposition or a request for extension of time to file such a notice.10

Although the USPTO's Notice specifically identified only those two TTAB filings, it also invited parties to request or move the TTAB for an extension or reopening of time in other situations where the COVID-19 outbreak has "prevented or interfered with" a timely filing.

What Are the Requirements to Obtain an Extension?

To qualify for the 30-day extension, a party must include a statement with its filing that the delay was due to the COVID-19 outbreak. The USPTO considers a delay to be "due to" the COVID-19 outbreak if it personally affected a practitioner, applicant, registrant, or other person associated with the filing or fee. The USPTO's Notice also requires that the outbreak have "materially interfered with timely filing or payment," and it provides examples of situations that would satisfy that standard:

  • Office closures;
  • Cash flow interruptions;
  • Inaccessibility of files or other materials;
  • Travel delays; and
  • Personal or family illness.

As long as an eligible document or fee is accompanied by such a statement, the USPTO will consider it timely if filed within 30 days of its original due date. Although the statement need not be verified, it does constitute a certification under 37 C.F.R. § 11.18(b), and any knowing and willful false statement may be subject to civil or criminal sanctions.

What Other Relief is Available?

Before the CARES Act went into effect, the USPTO had already offered some limited assistance to trademark owners and applicants. On March 16, the USPTO announced that it considers the COVID-19 outbreak to be an "extraordinary situation" and that the agency would therefore waive the petition fees ordinarily necessary to revive abandoned applications and to reinstate canceled or expired registrations.11 Consistent with the criteria to justify a filing extension, a party qualifies for a fee waiver if the inability to timely respond to a USPTO communication was due to the COVID-19 outbreak. In those circumstances, the party must file its petition within two months of the issue date of the notice of abandonment or cancellation (or six months, if the party received no such notice).

Practical Considerations

While these extensions may provide some relief, parties should carefully consider their situations before choosing to take advantage of them. First, while the definition of situations that "materially interfere" with filings is expansive—and indeed, the USPTO made clear that its examples are not an exhaustive list—parties should be confident that their delays in filing were in fact due to the COVID-19 outbreak. For example, a party who chooses to delay a filing when it otherwise could have met the deadline should not certify that the outbreak "materially interfered" with filing or payment. While it is unclear whether or to what extent the USPTO will review delayed filings, any false statement could subject the filer to a determination that the filing was untimely, which could result in the rejection of the filing entirely. And, of course, particularly egregious false statements could, theoretically, subject the filer to criminal prosecution.

Similarly unclear is how the TTAB will handle an argument by an adversary that a party did not obtain an extension in good faith and that the agency should reject or ignore the filing entirely. While the TTAB is generally understanding about extension requests, it is unknown whether it would entertain such arguments, or what the ramifications would be for the filing party.

Finally, extensions are available only for filing and fee deadlines from March 27 to April 30 (although the waiver of petition fees provided for in the USPTO's March 16 notice does not appear to be subject to this time limit). The USPTO has not yet indicated whether it will extend this relief, so parties who are currently facing deadlines for filing after April 30 should not count on the same relief. Applicants and owners should continue to monitor the USPTO's website for updates, and we will update or supplement this Advisory as the situation evolves.

© Arnold & Porter Kaye Scholer LLP 2020 All Rights Reserved. This Advisory is intended to be a general summary of the law and does not constitute legal advice. You should consult with counsel to determine applicable legal requirements in a specific fact situation.

  1. See Notice of Waiver of Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act (Mar. 31, 2020).

  2. See 15 U.S.C. § 1062(b) and 37 C.F.R. §§ 2.62(a) and 2.141(a).

  3. See 15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a).

  4. See 15 U.S.C. §§ 1126(d)(l) and 1141g, and 37 C.F.R. §§ 2.34(a)(4)(i) and 7.27(c).

  5. See 15 U.S.C. § 1141j(c) and  37 C.F.R. § 7.31(a).

  6. See 15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a).

  7. See 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.160(a).

  8. See 15 U.S.C. § 1141k(a) and 37 C.F.R. § 7.36(b).

  9. See 37 C.F.R. § 2.141(a).

  10. See 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and 2.102(a).

  11. See Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak (Mar. 16, 2020).  Under 37 C.F.R. § 1.183, the Director has the authority to suspend or waive any requirement, other than those set by statute, in an “extraordinary situation.”

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