Recognizing the disruptions caused by COVID-19, the United States Patent and Trademark Office (“USPTO”) is providing fee waivers for certain applicants that cannot meet filing deadlines to maintain their intellectual property rights. On March 16, 2020, the USPTO issued a notice designating the effects of the coronavirus outbreak an “extraordinary situation,” which is a defined term in the regulations. This allows the USPTO to provide trademark applicants and registrants some relief by suspending and waiving regulatory requirements or permitting petitions to do so.
The official USPTO Notice: “Relief Available to Patent and Trademark Applicants, Patentees and Trademark Owners Affected by the Coronavirus Outbreak” (the “Notice” can be accessed here) provides that:
The [USPTO] considers the effects of the Coronavirus outbreak that began in approximately January 2020 to be an “extraordinary situation” within the meaning of 37 CFR 1.183 and 37 CFR 2.146 for affected patent and trademark applicants, patentees reexamination parties, and trademark owners.
Here is what the USPTO’s designation of an “extraordinary situation” means.
The Notice only provides for the waiver of certain petition fees
The designation does not provide carte blanche to miss dates or fail to pay fees. Rather, the USPTO is waiving the petition fee to revive abandoned applications or reinstate canceled/expired registrations.
To qualify for the fee waiver, the petition must include “a statement explaining how the failure to respond to the Office communication was due to the effects of the Coronavirus outbreak.”
Additionally, the petition must be filed (1) not later than two months of the issue date of the notice of abandonment or cancellation (37 CFR 2.66(a)(1), 2.146(d)(1)), or (2) if the applicant did not receive a notice of abandonment or cancellation, then not later than six months after the date the trademark electronic records system indicates that the application is abandoned or the registration is canceled/expired (37 CFR 2.66(a)(2), 2.146(d)(2)).
Importantly, at this time, trademark filing dates and deadlines have not been extended.
The USPTO cannot waive statutory requirements
The Notice emphasizes that certain time periods, deadlines, and fees are statutory and thus cannot be extended or waived by the Director based on the “extraordinary situation” designation, i.e.:
the 36-month period set forth in 15 U.S.C. § 1051(d) within which a statement of use must be filed and the associated fee(s);
the periods set forth in 15 U.S.C. §§ 1058, 1141(k) for filing affidavits of continued use or excusable nonuse and the associated fee(s);
the period set forth in 15 U.S.C. § 1059 for filing a renewal and the associated fee(s); and
the periods set forth in 15 U.S.C. §§ 1063 and 1064 for filing an opposition or cancellation proceeding at the Trademark Trial and Appeal Board.
How to properly file a petition in light of the Notice
To obtain a waiver of the petition fee, a petitioner should follow the steps outlined below when submitting a petition to revive the abandoned application or a petition to reinstate the canceled/expired registration.
File the petition within two months of the issue date of the notice of abandonment or cancellation (or if the applicant did not receive a notice of abandonment or cancellation, then within six months after the date the trademark electronic records system indicates that the application is abandoned or the registration is canceled/expired).
File the appropriate petition through the Trademark Electronic Application System (“TEAS”). TEAS petition forms can be accessed here.
For abandoned applications, use the “Petition to Revive Abandoned Application.”
For canceled/expired registration, use the “Petition to the Director” form.
Include a statement explaining how the failure to respond to the Office communication was due to the effects of the coronavirus outbreak.
The COVID-19 crisis is obviously a fluid situation generating a multitude of issues on a daily basis. Seyfarth remains operational and is closely monitoring the situation around the clock. Seyfarth is prepared to protect your interests, help you mitigate risks and liabilities, and keep you informed regarding the latest implications related to the COVID-19 crisis. Visit our COVID-19 Resource Center for more information.