With all of the business interruption caused by the COVID-19 pandemic, many worldwide trademark offices have taken steps to recognize the issues caused by the crisis. The offices in which applicants from the U.S. most commonly file – the United States Patent and Trademark Office (USPTO), the European Union Intellectual Property Office (EUIPO), and the Canadian Intellectual Property Office (CIPO) – have provided some relief.

Under United States law, the USPTO does not have the congressional authority necessary to waive any dates or any requirements set by statute. This means that deadlines to submit statements of use, affidavits of continued use, renewals, oppositions, and cancellations – all set by statute – remain in effect and the consequence of a failure to file by the deadline will not change. The USPTO is, however, waiving fees (which are set by regulation, not statute) to revive abandoned applications or reinstate cancelled or expired registrations, if the revival potion (a) is filed within two months after the date of the notice of abandonment (or cancellation due to failure to file a declaration of use or a renewal) and (b) is accompanied by an explanation of how the failure to respond was caused by the current COVID-19 outbreak. While other excusable delays could enable revival of the given file, revivals on this basis will save the applicant/registrant the revival fees ($100 or $200 per filing depending on filing method). The details are set forth in this document provided on the USPTO website.

This, of course, does not help with missed deadlines to file an opposition or cancellation, nor does it affect deadlines at the Trademark Trial and Appeal Board in connection with a pending opposition, cancellation, and/or appeal. But consequences of failing to meet such deadlines in a pending TTAB action can often be reversed on motion. As for hearings, the office (including the TTAB) is physically closed, but hearings are being conducted remotely by video or by phone until further notice.

For EU filings, without limitations on its power to change statutory deadlines, EUIPO has effectively extended all deadlines – whether statutory or set by the Office – until May 4, 2020. While the stated extension is to May 1, because the Office recognizes that date as a public holiday (which falls on a Friday this year), all EUIPO deadlines that would otherwise have expired between March 9, 2020 and April 30, 2020 have been extended to Monday, May 4, 2020.

At CIPO, the Registrar has “designated” the days falling between March 16 and 31, 2020, which means all deadlines falling in that period are automatically extended to April 1, 2020. The Office further provided it considers the situation a sufficient circumstance to obtain certain other extensions upon request.

Other trademark offices around the world are taking similar steps to remediate the effects of the global crisis on trademark filings, and you should check the pronouncements of each office where you have affected filings.

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Photo of Nate Garhart Nate Garhart

Nate Garhart’s practice centers on protecting and maximizing the value of various forms of intellectual property, which often represent important assets and major revenue sources for organizations ranging from startups to public companies and nonprofits.

Nate’s work spans the gamut from selecting and…

Nate Garhart’s practice centers on protecting and maximizing the value of various forms of intellectual property, which often represent important assets and major revenue sources for organizations ranging from startups to public companies and nonprofits.

Nate’s work spans the gamut from selecting and registering trademarks, to protecting and enforcing copyrights, to strategic negotiation of licenses of all kinds. He also works with clients to minimize the legal risks related to their branding, advertising, and publicity strategies.

Online, he counsels clients on internet issues and e-commerce topics, drafts website terms of use and privacy policies helping clients comply with Europe’s GDPR and California’s CCPA, and reviews customer communications for compliance with current laws.

Contact: ngarhart@fbm.com

Photo of Julia Kropp Julia Kropp

Julia Kropp focuses her litigation practice on technology clients, specifically in representing companies in the hardware, software, semiconductor, and solar industries. She represents public and private corporations in litigation as both defense and plaintiff’s counsel.

Contact: jkropp@fbm.com