USPTO Offers Relief to Trademark Owners and Applicants Affected by the COVID-19 Outbreak

Amidst the ongoing COVID-19 outbreak, many federal agencies are implementing measures to assist individuals and entities being affected by the pandemic. The United States Patent and Trademark Office (USPTO) has taken action in order to assist trademark applicants and owners who have been affected by the outbreak.

According to an official notice issued on March 16, 2020, “[t]he United States Patent and Trademark Office (USPTO) considers the effects of the Coronavirus outbreak to be an “extraordinary situation” within the meaning of 37 CPR 1.183 and 37 CPR 2.146 for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners.”

The USPTO has announced that it will waive the petition fees to revive abandoned trademark applications or to reinstate canceled/expired registrations due to the COVID-19 outbreak.  The notice especially refers to trademark applications and registrations that were abandoned or canceled/expired due to applicants’ or registrants’ inability to timely respond to a trademark-related Office communication.

Further, the USPTO requires such petition to be filed within two months of the issuance of the notice of abandonment or cancellation/expiration, and to include a statement explaining how the failure to respond to the Office communication was due to the COVID-19 outbreak.

The notice, however, does not grant waivers or extensions of dates or requirements set by statute. Specifically, the following statutory trademark-related time periods are not extended and statutory fees are not waived:

  • the 36-month period within which a statement of use must be filed and the associated fee(s);
  • the period for filing affidavits of continued use or excusable nonuse and the associated fee(s);
  • the period for filing a renewal and the associated fee(s); and
  • the period for filing an opposition or cancellation proceeding at the Trademark Trial and Appeal Board.

It is important to note that the USPTO is not waiving or extending any deadlines at this time. Accordingly, trademark applicants and owners must still meet the statutory requirements. However, because the current pandemic is a continually evolving situation, the USPTO may issue further directives or notices as circumstances change.