News
May 1, 2020

USPTO Further Extends Trademark Filing Deadlines

Advisory

On April 28, 2020, the United States Patent & Trademark Office (USPTO) issued a notice further extending the time to file certain trademark-related documents and to submit certain fees, superseding the extensions set forth in the USPTO's March 31, 2020 notice.1 Under the new notice, any eligible filings and fees that would have been due between March 27 and May 31, 2020 will be considered timely so long as they are filed by June 1, 2020. The trademark filings eligible for the 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 U.S. application;5
  • 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

To be eligible for the extension to June 1, a party must include a statement that the delay was due to the COVID-19 outbreak, meaning that the party was personally affected by the outbreak such that it "materially interfered" with the party's ability to timely submit its filing or payment.

As in the previous notice dated March 31, 2020, the USPTO continues to advise that in order to obtain extensions in proceedings pending before the TTAB, a request must be made to the TTAB.

Additionally, the new notice provides that where a party was unable to submit a filing or payment in response to a USPTO communication due on or before May 31, such that the party's application became abandoned or the registration was canceled/expired, the USPTO will waive the petition fees ordinarily necessary to revive abandoned applications and to reinstate canceled or expired registrations. To receive this fee waiver, 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 receives no such notice), and it must include a statement that the delay in response or payment was due to the COVID-19 outbreak.

© 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 Extended Waiver of Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act and Other Relief Available to Trademark Applicants and Trademark Owners (Apr. 28, 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).

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