UPDATE: APRIL 28: The USPTO has updated its program which changes some of the information below regarding dates. Read more here.
The US Patent and Trademark Office is allowing a 30-day extension to some trademark filing and fee deadlines missed because of the COVID-19 epidemic. The below are frequently asked questions on that extension program for trademark-related issues.
Question 1: How do I take advantage of the 30-day extension of time for certain trademark- and TTAB-related deadlines?
If an eligible document or fee is due between March 27, 2020, and April 30, 2020, the filing will be considered on-time if it is made within 30 days of the original due date, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. See Notice of Waiver of Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act.
Question 2: Does the statement that the delay in filing or payment was due to the COVID-19 outbreak need to be verified or in the form of a declaration or affidavit?
No, there are no formal requirements for how the statement is made. The statement need not be verified or provided in affidavit or declaration form. It can be provided in the relevant TEAS or ESTTA form or included in the document being filed. TEAS filings all have a spot for a miscellaneous statement – this may be a good location to make the statement, provided it is very clear. These statements are a certification under 37 CFR § 11.18(b), and violations of that section may be subject to sanctions. The statements must, of course, be truthful.
Question 3: What is the standard for determining whether the delay in filing or payment was due to the COVID-19 outbreak?
A delay in filing or payment is due to the COVID-19 outbreak if the outbreak materially interfered with an on-time filing, response, or fee payment in a trademark application, registration, or proceeding.
Question 4: What circumstances qualify as materially interfering with timely filing or payment?
Circumstances that qualify as materially interfering with timely filing or payment include, without limitation, office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or similar circumstances.
Question 5: Who must have been affected in order to take advantage of the 30-day extension of time?
The person affected by the outbreak may be a practitioner, trademark applicant, registrant, or other person associated with the filing or fee. It is unclear whether the person must actually be sick; the language of the rule says the person must be affected by the outbreak, not by the disease itself.
Question 6: When does my new trademark or TTAB filing deadline run?
Determine your new filing deadline by adding 30 calendar days to your original filing deadline, but only if the original due date was between (or including) March 27, 2020, and April 30, 2020. If the extended deadline falls on a Saturday, Sunday, or a federal holiday, the extended deadline is the next regular business day.
Question 7: Will the US Patent and Trademark Office have further extensions available?
At this time, there has been no announcement. However, it is expected that if the outbreak continues, and especially continue to depress the economy significantly, the availability of the extension will also be continued.
Question 8: Are all trademark filings eligibility for extension?
No, only some of the filings and fees are eligible.
Question 9: What trademark filings are eligible for the 30-day extension of time if the delay was due to the COVID-19 outbreak?
First, only deadlines that are delayed due to the COVID-19 outbreak may be delayed. Second, only certain filings are eligible, including the following:
- response to an Office action in a trademark application, including a notice of appeal from a final refusal
- statement of use or request for extension of time to file a statement of use in a trademark application
- priority filing basis under 15 U.S.C. § 1126(d)(l) and 37 C.F.R. § 2.34(a)(4)(i)
- priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c)
- transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a)
- in a trademark registration, an affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a), 37 C.F.R. § 2.160(a), 15 U.S.C. § 1141k(a), and 37 C.F.R. § 7.36(b)
- renewal application
Question 10: TEAS is electronic and sometimes does not accept filings after the deadline. Will TEAS automatically accept a filing made under the CARES Act extension?
Yes. TEAS will accept your filing. Locate the TEAS form for the filing you need to make, enter the required information for the filing, and add a statement that the delay in filing or payment was due to the COVID-19 outbreak in the “Miscellaneous Statement” field of the form you are filing.
Question 11: Is the US Patent and Trademark Office open for filing trademark documents and fees even though its offices are closed to the public?
Yes, the USPTO is open for the filing of trademark documents and fees. Use TEAS for all trademark application and post-registration filings. For more information,
Question 12: What TTAB deadlines are eligible for the 30-day extension of time if the delay was due to the COVID-19 outbreak?
There are only two deadlines that can definitely be extended at the TTAB. They are:
- a notice of appeal from a final refusal under 15 U.S.C. § 1062(b) and 37 C.F.R. § 2.62(a)
- a notice of opposition or request for extension of time to file a notice of opposition under 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and § 2.102(a)
For any other TTAB situation where the COVID-19 outbreak has interfered with a filing, you can request (in ex parte appeals) or file a motion (for trial cases) for an extension or reopening of time. It may or may not be granted, however.
Question 13: Will ESTTA accept a filing made under the CARES Act extension?
Yes. ESTTA will accept your filing. Locate the ESTTA form for your filing, enter the required information, add any attachments, and add a statement that the delay in filing or payment was due to the COVID-19 outbreak in the attachment or appropriate field of the form you are filing. Make sure that the request is conspicuous and obvious.
Question 14: How do I receive an extension for a TTAB filing?
You must file the extension request through ESTTA and include a statement that the delay in filing or payment was due to the COVID-19 outbreak.
Question 15: Will the TTAB grant a final 60-day extension of time to oppose because of the COVID-19 outbreak?
The effects of the COVID-19 outbreak are considered good cause in support of a second extension of time to oppose, if the first extension was a 30-day extension of time to oppose, or in support of an initial extension of 90 days to oppose, when a longer initial extension is desired. The effects of the COVID-19 outbreak also are considered extraordinary circumstances in support of the final 60-day extension of time to oppose. Fees for an extension requiring a showing of good cause or extraordinary circumstances are still required, even though the filing may be made later than when it would otherwise be due, if the delay in filing is due to the COVID-19 outbreak. When specifying the good cause or extraordinary circumstances, the statement that the delay was due to the COVID-19 outbreak can be included in the “other” basis for the extension.
Question 16: Has the USPTO provided any other relief for trademark filers in view of the COVID-19 outbreak?
Yes. For trademark applications and registrations that were abandoned or canceled due COVID-19 outbreak, the USPTO is waiving the petition fee to revive the abandoned application or reinstate the canceled registration.
The petition to revive or reinstate must include a statement describing how the missed deadline was caused by the COVID-19 outbreak, and it must be filed within two months of the issue date of the notice of abandonment or cancellation. If the trademark applicant or registrant did not receive that notice, the petition must be filed no later than six months after the date the Trademark Office’s electronic records show that the application is abandoned or the registration is canceled.
Question 17: If I have a question about CARES Act extensions, whom do I contact?
While the Patent Office has a help email dedicated to COVID-19, the Trademark Office is using a general inbox: TMPolicy@uspto.gov. I have found, however, that emails sent to general email addresses at the USPTO never get returned. You can also contact the Trademark Office of Petitions at 571-272-8950, or for TTAB matters, you can use TTABInfo@uspto.gov or 571-272-8500. You can also call Arizona trademark attorney Tom Galvani.