CARES Act Impact On Trademark Office Filings

• Published date: 07 May 2020
• Author: Ms Dori Hanswirth, Paul C. Llewellyn and Rebecca A. Beyer
• Subject Matter: Intellectual Property, Coronavirus (COVID-19), Trademark, Litigation, Contracts and Force Majeure
• Law Firm: Arnold & Porter

Introduction

The Coronavirus Aid, Relief, and Economic Security Act (CARES Act) offers help to trademark applicants and owners who may struggle to meet filing and response deadlines because of the COVID-19 outbreak. On March 31, relying on Section 12004 of the CARES Act, the Director of the US Patent and Trademark Office (USPTO) issued a Notice providing a 30-day extension to file certain trademark-related documents and to submit certain fees that would have been due between March 27 and April 30, 2020. ¹ However, anyone seeking to take advantage of an extension must have been unable to meet the original deadline because of the COVID-19 outbreak.

What Filings are Eligible?

The trademark filings eligible for the 30-day extension are:

• Response to an office action; ²
• Statement of use or request for extension of time to file such a statement; ³
• Priority filing basis; ⁴
• Transformation of an extension of protection to the United States into a US application⁵
• Section 8 affidavit of use or excusable nonuse; ⁶
• Renewal application; ⁷ and
• Section 71 affidavit of use or excusable nonuse. ⁸

Certain Trademark Trial and Appeal Board (TTAB) filings are also eligible for the 30-day extension:

• Notice of appeal from a final refusal to register a trademark; ⁹ and
• Notice of opposition or a request for extension of time to file such a notice. ¹⁰

Although the USPTO's Notice specifically identified only those two TTAB filings, it also invited parties to request or move the TTAB for an extension or reopening of time in other situations where the COVID-19 outbreak has "prevented or interfered with" a timely filing.

What Are the Requirements to Obtain an Extension?

To qualify for the 30-day extension, a party must include a statement with its filing that the delay was due to the COVID-19 outbreak. The USPTO considers a delay to be "due to" the COVID-19 outbreak if it personally affected a practitioner, applicant, registrant, or other person associated with the filing or fee. The USPTO's Notice also requires that the outbreak have "materially interfered with timely filing or payment," and it provides examples of situations that would satisfy that standard:

• Office closures;
• Cash flow interruptions;
• Inaccessibility of files or other materials;
• Travel delays; and
• Personal or family illness.

As long as an eligible document or fee is accompanied by such a statement, the USPTO will consider it timely if filed within 30 days of its original due date. Although the statement need not be...