Faegre Drinker Biddle & Reath LLP

As we continue to watch the effects of COVID-19 on our communities, it is impossible not to be struck by the scale of school closures and shuttered businesses, as well as the swift transitions made to accommodate mass teleworking nearly overnight. We have seen various government agencies offering late fee forgiveness, deadline extensions, and a plethora of other accommodations in light of the unique challenges presented by the novel virus.

When considering how COVID-19 might impact trademarks here in the United States, there are two important things to keep in mind:

  1. The USPTO has NOT Suspended Filing Deadlines: As of the date of this writing, the USPTO has elected to continue operations and is requiring all filings to be submitted by the applicable deadlines. This applies equally to all types of filing deadlines including declarations of use, renewals, statements of use, submissions in connection with Trademark Trial and Appeal Board proceedings, and responses to Office Actions. In this regard, the USPTO is still accepting trademark filings and all other ordinary submissions. Indeed, due to the Trademark Office’s remote work infrastructure, we do not anticipate a complete closure of the Trademark Office unless the circumstances surrounding COVID-19 significantly worsen.
  2. The USPTO HAS Acknowledged That Some Deadlines Might Be Missed: While the USPTO has not categorically extended or suspended deadlines in the same manner as some other government agencies, the Trademark Office has acknowledged that circumstances surrounding COVID-19 represent an “extraordinary situation” within the meaning of 37 CFR 1.183 and has elected to waive all associated petition fees. As such, if certain deadlines are missed as a result of COVID-19 related circumstances, it may be possible to submit a Petition to the Director free of charge to help ensure the relevant trademark rights are not waived, abandoned, or allowed to expire. Such petitions must include a statement explaining how the failure to timely file resulted from the effects of the COVID-19 outbreak. Because underlying deadlines are not being altered, this petition must still be timely submitted (i.e. within two months of the issue date of the relevant notice of abandonment or cancellation, or six months from the date of abandonment, cancellation or expiration if such notice was not received). While this is a nice gesture on the part of the USPTO, the better approach is to avoid having to file such a petition, in view of the cost of preparing and submitting it, and the risk of the petition ultimately being denied.