May 12th, 2020

The USPTO’s COVID-19 Extensions of Time: What Trademark Attorneys and Brand Owners Need to Know

As we previously reported, the United States Patent and Trademark Office has responded to the COVID-19 pandemic by allowing trademark applicants and owners to extend certain deadlines falling between March 27th and May 31, 2020 until June 1, 2020. Here are the details you should know:

1.  The extension only applies to the following types of filings:

Foreign priority claims;

  • Office Action Responses;
  • Notices of Appeal from Final Refusals;
  • Statements of Use or Excusable Non-Use;
  • Requests for extensions of time to file Statements of Use or Excusable Non-Use;
  • Declarations of Use or Excusable Non-Use;
  • Renewals;
  • Notices of opposition; and
  • Requests for extensions of time to oppose a third party application.

 

2.  You do not need to file a request to get the extension (in fact, you can’t).

3.  To get the extension, just submit your filing on or before June 1, 2020, and include a statement in it confirming that the delay was due to the COVID-19 outbreak, i.e., stating that the pandemic materially interfered with the timely filing or payment necessary to meet the relevant deadline.

  • This statement can be included in the “Miscellaneous Statements” section of your filing.
  • It does not need to be verified or the subject of a formal declaration or affidavit.
  • The USPTO has expressly stated that “office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or similar circumstances” will justify a grant of the extension, whether experienced by the trademark applicant or registrant, its attorney, or any other person associated with the filing.

 

4.  Despite the apparent informality of the required statement, it is made pursuant to 37 C.F.R. § 11.18(b). In other words, it is a certification, and the person who signs it is personally vouching for its truthfulness. Although the USPTO’s rules permit it, outside counsel should exercise careful consideration before signing these statements on behalf of their clients. That is because these statements are factual declarations that are material to the validity of their clients’ filings. An outside attorney who chooses to sign the statement justifying a COVID-19 extension should not be surprised if he or she is later subpoenaed as a fact witness if the validity of the application or registration is ever challenged by a third party.

That’s it! If you need help addressing a trademark issue caused by the COVID-19 pandemic, please contact Catherine Farrelly or another member of the Frankfurt Kurnit Trademark & Brand Management Group.