Your Trademark and the COVID-19 Outbreak

Written by Alesha M. Dominique and Sofia Castillo

This week, the U.S. Patent and Trademark Office (USPTO) announced that it considers the effects of the Coronavirus outbreak to be an “extraordinary situation” within the meaning of 37 CFR 2.146 for affected trademark applicants and trademark owners. In response, it is waiving the petition fees (set by regulation, rather than statute) that it normally charges to revive an abandoned trademark application and to reinstate a canceled or expired trademark registration if they were abandoned or canceled/expired as a result of the impact of the Coronavirus outbreak. Other trademark-related deadlines and fees will not change.

Specifically, the USPTO is waiving the petition fee to revive an abandoned application or to reinstate a canceled or expired registration if it was abandoned or canceled/expired “due to an inability to timely respond to a trademark-related Office communication as a result of the effects of the Coronavirus outbreak.” A petition must be accompanied by a statement that explains “how the failure to respond to the Office communication was due to the effects of the Coronavirus outbreak.”

A petition and its accompanying statement must be filed no later than two (2) months from the issue date of the notice of abandonment or cancellation. If the applicant or registrant does not receive a notice of abandonment or cancellation, the petition and accompanying statement must be filed no later than six (6) months after the date the trademark electronic records system indicates that the application is abandoned or the registration is canceled or expired.

Time periods and fees associated with other trademark prosecution matters remain unchanged, including filing of statements of use, affidavits of continued use or excusable nonuse, and renewals. Similarly, the USPTO is not extending the deadlines or waiving the fees associated with filing opposition or cancellation proceedings with the Trademark Trial and Appeal Board. You can read the full announcement here.