How Trademark Rights May Be Impacted by Coronavirus Outbreak

Please be aware that the firm is fully operational and mindful of the Coronavirus outbreak, and as such we are making every effort to communicate with clients at earlier stages regarding upcoming deadlines at the United States Patent & Trademark Office "USPTO". The USPTO has determined that the effects of the Coronavirus pandemic constitute an "extraordinary situation" under 37 C.F.R. 1.183 and 37 C.F.R. 2.146 for patent and trademark applicants and owners. For clients of the firm, if possible promptly respond to our email communications concerning filing deadlines. Kindly advise the firm of your instructions well in advance of USPTO filing due dates and in writing.

If COVID-19 has directly impacted you or your business and has temporarily prevented you from using your trademark in commerce, you may request to be temporarily excused from using your trademark. When a registrant is ready to file the section 8 or section 71 declaration, the registrant can provide a statement wherein it offers an explanation of how COVID-19 affected their business. The statement should indicate that the Coronavirus outbreak has caused you to temporarily stop using your trademark for the products and services covered by your registration. The registrant should include the date the mark was last used, steps you are taking to resume use, and the approximate date you anticipate resuming use of your mark in commerce. This type of predicament falls under “excusable nonuse, see TMEP sections 1604.11 and 1613.11 for more information on the topic.

Also, please be aware of a mandatory requirement issued by the USPTO (as of February 15, 2020) that all U.S. applicants and registrants must provide an email address as part of the trademark record. This means that in order to receive a filing date, an email address for the applicant must be included in the trademark application. However, keep in mind that if an attorney represents an applicant or registrant, the USPTO will only correspond with the attorney at the attorney's email address of record. However, this is not a filing requirement for an initial 66(a) application since it is immediately transmitted to the International Bureau and the application does not include an email address. If the 66(a) application is in order to publish, then the Examining Attorney will not require the submission of the email address before publication. But, the TEAS (Trademark Electronic Application System) forms for 66(a) applications will require an email address for any subsequent submissions.

Regarding Trademark applications and registrations that were abandoned, canceled or expired due to inability to respond on time because of the effects of the Coronavirus outbreak, the USPTO will waive the petition fee (which is set by regulation and not statute). This will give trademark applicants and owners an opportunity to revive the application or reinstate the registration. When making efforts to revive a trademark application, one should utilize the TEAS, Petition To Revive Abandoned Application form.

Regarding cancelled or expired trademark registrations; the owner should use the TEAS, Petition To The Director form. All Petitions of this nature must include a statement describing how the effects of the Coronavirus outbreak impacted your ability to take measures to file the appropriate documents with the USPTO. Petitions must be filed within two months of the issue date of either the Notice of Abandonment or the Notice of Cancellation. However, there is an exception to this rule. If the applicant or registrant did not receive a Notice of Abandonment or a Notice of Cancellation, then a Petition must be filed within six months of the date in the Trademark Electronic Record System reporting that the trademark application was abandoned or the registration expired or cancelled. This applies to trademark applicants and owners unable to reply to Office Communications with due dates between March 27, 2020 and May 31, 2020 and filing by June 1, 2020 will be considered timely.

In addition, the USPTO has issued the following important notifications: (1) oral hearings and in person meetings with parties and stakeholders after March 13, 2020 will be conducted remotely by video or telephone; (2) the USPTO is waiving the requirement for original handwritten signatures for certain correspondence; and (3) the USPTO's director has the power to extend certain statutory filing deadlines for trademarks and patents pursuant to section 12004 of the $2 trillion Coronavirus Aid Relief and Economic Security ("CARES") Act which was signed into law at the end of last week.

Initially there was a 30 day extension for certain filings from the initial date it was due if the due date was between March 27, 2020 and April 30, 2020, and if the filing is accompanied by a statement that the delay in filing or payment was due to the Coronavirus outbreak as defined in CARES. Some examples of the types of filings that will benefit from the 30 day extension include, but are not limited to: (1) responses to Office Actions; (2) declarations of use and renewal applications; (3) statements of use and requests for extensions of time for statements of use; (4) notices of appeal from a final refusal; and (5) pleadings in Trademark Trial and Appeal Board proceedings.

There has been an update to the extension granted on March 31, 2020. On April 28, 2020, pursuant to the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) signed by President Trump on March 27, the USPTO further extended the time to file certain patent and trademark-related documents and to pay certain required fees, which otherwise would have been due between March 27 and May 31, to June 1, 2020. This Notice (see Trademark extensions) supersedes the Notices issued on March 31, 2020 and March 16, 2020. The USPTO has also clarified in this Notice the relief for those trademark applicants and owners who were unable to timely submit a filing or payment in response to an Office communication due to the COVID-19 pandemic and this resulted in the trademark registration being canceled/expired or the application being abandoned.

This waiver of trademark and patent related deadlines is based on Title 35 of the US Code, The Trademark Act and Section 18 of the Leahy-Smith America Invents Act. For all the details on this waiver of USPTO deadlines see https://www.uspto.gov/coronavirus. This is welcomed relief. If you have questions regarding how the Coronavirus outbreak impacts your trademark rights or filing deadlines, please feel free to contact the firm.