The USPTO Considers The Effects Of The Coronavirus Outbreak To Be An 'Extraordinary Situation:' What That Means For Trademark Applicants And Trademark Owners

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...