June 2, 2020

June 02, 2020

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June 01, 2020

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In a Notice issued March 31, 2020, the U.S. Patent and Trademark Office (“USPTO”) extended certain filing and payment deadlines due between March 27, 2020, and April 30, 2020, by 30 days from the initial due date, provided that the filing is accompanied by a statement that the delay was due to the COVID-19 outbreak. The USPTO’s authority to offer this extension was part of the Coronavirus Aid, Relief, and Economic Security Act (CARES Act), signed into law on March 26, 2020.

The USPTO remains open, and filings and payments only qualify for this 30-day extension if:

a practitioner, applicant, registrant, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.

This extension is available for responses to Office Actions, statement of use or requests for extension, notices of opposition or requests for extension of time to file a notice of opposition, priority filings, transformation of an extension of protection to the United States into a U.S. application, affidavits of use or excusable nonuse, and renewals.

However, the extension does not apply to matters before the Trademark Trial and Appeal Board (TTAB), although those affected by the COVID-19 outbreak may request (in ex parte appeals) or bring a motion (for trial cases) for an extension of time.

In addition, the existing procedures to revive an abandoned/expired trademarks remain available, and pursuant to the USPTO’s prior March 16, 2020 Notice, the USPTO has waived its usual petition fees where the petition includes a statement explaining that the unintentional abandonment/ expiration was due to the COVID-19 outbreak.

Copyright 2020 K & L Gates


About this Author

David J. Byer, KL Gates, cyberlaw trademark lawyer, licensing attorney

Mr. Byer is a partner in the Intellectual Property practice group. Mr. Byer concentrates on intellectual property counseling and litigation, particularly on issues relating to copyright, trademark, cyberlaw and licensing. He assists companies involved in the technology, biotechnology, publishing, manufacturing, medical devices, entertainment and electronics industries to develop and exploit robust intellectual property assets in the United States and around the world. Mr. Byer represents both licensors and licensees of world-famous brands and content across a range of...

Eric Lee, KLGates Law Firm, Commercial Litigation Attorney

Eric Lee concentrates his practice on general civil and commercial litigation matters, with an emphasis on patent, trademark, copyright, and other complex intellectual property litigation. He also counsels clients regarding their intellectual property portfolio development through the creation, development, and leveraging of copyrights and trademarks. In addition, Mr. Lee has experience in class action litigation and consumer finance litigation, including the defense of banking, mortgage lending, and consumer financing services companies in state and federal class actions.