USPTO extending deadlines falling between March 27- April 30, 2020

The 30 day extensions apply to:

1. Office Action response deadlines including the deadline to file a notice of appeal from a final refusal;
2. Statement of Use deadlines or the deadlines to request extensions of same;
3. Notice of Opposition deadlines or the deadlines to request extensions of same;
4. Affidavits of Use (or excusable non-use) deadlines
5. Renewal deadlines;
6. Priority filing deadlines for applications filed under the Paris Convention (Section 44) or extensions of protection from international registrations under Madrid (Section 66).

The filing must be accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak as a result of, for example, office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances (which should be stated in the filing).  The USPTO has emphasized that as it remains open for filings, the waiver detailed above is only available if the delay is due to COVID-19.

Litigants facing difficulty satisfying other TTAB deadlines in ex parte appeals or inter partes cases as a result of the COVID-19 outbreak can file requests for an extension or reopening of time, as appropriate, with the Board.  The implication is that the Board will be relatively liberal in granting legitimate extension requests.

Finally, the USPTO has clarified that the existing procedures to revive abandoned applications or reinstate cancelled/expired registrations remain available for applicants/registrants whose marks were abandoned/cancelled/expired due to the inability to timely respond as a result of the COVID-19 outbreak.  Fees for such petitions are waived pursuant to the USPTO’s March 16, 2020 notice entitled “Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners”.

Read more details in the USPTO’s official trademark notice.

Authored by Julia Matheson