Trademark Office Deadlines and Coronavirus-Related Delays (Update #3)

Farella Braun + Martel LLP

Farella Braun + Martel LLP

With all of the business interruption caused by the COVID-19 pandemic, many worldwide trademark offices have taken steps to recognize the issues caused by the crisis. The offices in which applicants from the U.S. most commonly file – the United States Patent and Trademark Office (USPTO), the European Union Intellectual Property Office (EUIPO), and the Canadian Intellectual Property Office (CIPO) – have provided some relief.

Under United States law, the USPTO does not have the congressional authority necessary to waive any dates or any requirements set by statute. As an initial step, the USPTO began waiving fees (which are set by regulation, not statute) to revive abandoned applications or reinstate cancelled or expired registrations, if the revival potion (a) is filed within two months after the date of the notice of abandonment (or cancellation due to failure to file a declaration of use or a renewal) and (b) is accompanied by an explanation of how the failure to respond was caused by the current COVID-19 outbreak. While other excusable delays could enable revival of the given file, revivals on this basis will save the applicant/registrant the revival fees ($100 or $200 per filing depending on filing method). The details are set forth in this document provided on the USPTO website.

On Friday, March 27, 2020, the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) was signed into law (the full 880-page text of the CARES Act passed by the Senate is available here). Under the act, Congress granted to the USPTO Director the power to extend deadlines. This power will last for sixty days beyond the end of the period of the President’s Declaration of a National Emergency, which period began on March 13, 2020 and has a yet-undetermined end date. PTO Director Andrei Iancu issued guidelines on March 31, 2020 providing, among other things, for 30-day extensions of deadlines for office action responses, statements of use, and notices of opposition that would have been due between March 27 and April 30 if accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. We will continue to monitor whether existing deadlines are extended any further.

The USPTO has also issued a set of FAQs explaining some of the potential ambiguities in the order. For example, the Office has provided that the accompanying explanation will satisfy the “material interference” standard required for relief if the COVID-19 outbreak caused the delay in timely filing or payment through (by way of non-limiting example) “office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or similar circumstances.” Additionally, it makes clear that the statement as to the basis for the relief need not be verified or accompanied by an affidavit or declaration, though it cautions that such statements due amount to a certification under the controlling trademark practice regulations, and false statements would subject the filer to sanctions.

For EU filings, without limitations on its power to change statutory deadlines, EUIPO has effectively extended all deadlines – whether statutory or set by the Office – until May 4, 2020. While the stated extension is to May 1, because the Office recognizes that date as a public holiday (which falls on a Friday this year), all EUIPO deadlines that would otherwise have expired between March 9, 2020 and April 30, 2020 have been extended to Monday, May 4, 2020.

At CIPO, the Registrar has “designated” the days falling between March 16 and 31, 2020, which means all deadlines falling in that period are automatically extended to April 1, 2020. The Office further provided it considers the situation a sufficient circumstance to obtain certain other extensions upon request.

Other trademark offices around the world are taking similar steps to remediate the effects of the global crisis on trademark filings, and you should check the pronouncements of each office where you have affected filings.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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