US Patent and Trademark Office Trademark Filling Extensions Update

Founders Legal (Bekiares Eliezer LLP) is a boutique law firm based in Atlanta, Georgia USA, that focuses exclusively on complex matters in the areas of Intellectual Property, Corporate, Transactional, and Securities law.

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].