US Patent and Trademark Office Trademark Filling Extensions Update

COVID-19 continues to cause numerous cities and states to issue “stay at home orders” disrupting many business’ ordinary operations. As a result of the Coronavirus Aid, Relief, and Economic Security Act (the “CARES Act”), the United States Patent and Trademark Office (the “USPTO”) has extended certain filing deadlines for selected patent and trademark documents.

Specifically, for trademark filings, any of the following actions under certain sections may now qualify for a revised due date:

  • Response to a USPTO office action
  • Response to a notice of appeal from a final refusal
  • Statement of use or request for an extension of time for a statement of use
  • Notice of opposition or request for an extension of time for a notice of opposition
  • Priority filing basis
  • Transformation of an extension of protection to the United States into a US application
  • Affidavit of use or excusable nonuse
  • Renewal application

If the original filing deadlines for any of the above filings are due between March 27, 2020 and April 30, 2020, the USPTO has authorized a 30-day extension “provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.” The USPTO clarified that this means a practitioner, applicant, registrant, or other person associated with the filing or few was personally affected by the COVID-19 pandemic, “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 materially interfered with timely filing or payment.”

The USPTO has also waived the handwritten signature requirement for registration to practice before the USPTO in patent cases, enrollment and disciplinary investigations, or disciplinary proceedings and payments by credit cards not made via the USPTO’s electronic filing system.

The USPTO maintains that it is still open and operational having made the necessary operational adjustment to keep its staff safe and working remotely. As well, in-person meetings, such as hearings and examiner interviews, are being conducted virtually by phone and video until further notice.

Written by Andrei Tsygankov and Stan Sater

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If you are a business that has questions about your trademark filings during this time, contact our Founders Legal team at [email protected] and [email protected].

Protecting Your Hemp and CBD Brand Through Trademarks

The 2018 Farm Bill was passed on December 20, 2018, and, among other things, removed hemp from the definition of marijuana under the Controlled Substances Act (“CSA”). Prior to the passage of this Farm Bill, the U.S. Patent and Trademark Office (“USPTO”) could refuse any cannabis or cannabis-related trademark application, on its face, because the identified goods and/or services were unlawful under the CSA. In other words, because the good or service for which the trademark was being sought was not in lawful use in interstate commerce, the USPTO would not grant federal trademark protection. With the passage of the Farm Bill, the USPTO is having to change its review practices to handle the confusion that the Bill created as to the trademark rights of cannabis or cannabis-related businesses.

 On May 2, 2019, the USPTO issued new guidance addressed to its trademark examiners on how to handle trademark applications for cannabis-related products. The guidance reiterates that a product ‘must first be in lawful use’ to receive a federal trademark. As it relates to cannabis or cannabis-related trademarks filed on or after December 20, 2018, a lawful use determination “requires consultation of several different federal laws” including the CSA and the Federal Food Drug and Cosmetic Act (“FDCA”). The FDCA, which is overseen by the Food and Drug Administration (“FDA”), makes it unlawful to introduce hemp-derived foods, beverages, dietary supplements, or pet treats unless approved by the FDA. Additionally, under the FDCA, “any product intended to have a therapeutic or medical use intended to affect the structure or function of the body” is a drug. Drugs cannot be distributed or sold in interstate commerce unless approved by the FDA. At present, other than Epidiolex, a plant-derived CBD product used to treat two pediatric epilepsy disorders, no cannabis-derived drug products have been approved by the FDA. The FDA recently restated its viewpoint on the market for CBD products in a revised consumer update and is carefully monitoring the space, having issued 15 warning letters to cannabis-related companies selling products in violation of the FDCA.

  For trademark applications filed before December 20, 2018, the examiners may allow applicants to amend their applications to claim a December 20, 2018 filing date to overcome a refusal based on the CSA. As the trademark can still be denied for the other reasons as discussed above, examiners may also allow applicants to amend the original filing basis to an “intent-to-use” basis. With the date change and the “intent to use” change, the examiner will conduct a new search of conflicting trademarks in the USPTO’s records. If applicants choose not to amend their application, they can abandon the application and re-file or respond to the examiner’s office action with evidence to oppose the examiner’s determination. As it relates to hemp cultivation or production services, the examiners will investigate the applicant’s legal ability to cultivate and produce hemp. Per the 2018 Farm Bill, hemp must be produced “under license or authorization by a state, territory, or tribal government in accordance with a plan approved by the U.S. Department of Agriculture (USDA) for the commercial production of hemp.” However, the USDA has not approved any state, territory, or tribal government hemp production plan. Therefore, hemp cultivation or production services trademark applications could still be denied despite the 2018 Farm Bill.

While there is still uncertainty about the future for granting federal cannabis or cannabis-related trademarks, applicants can seek state trademark registration or protect their rights against copiers at common law. Each trademark strategy must be tailored to the applicant’s business and products.

Written by: Stan Sater and David H. Pierce