Trademarks and Trademark Trial and Appeal Board (TTAB) FAQs: Extension of Deadlines under the CARES Act

Trademarks and TTAB Joint FAQs

Question 1: How do I take advantage of the period of relief for certain Trademark and TTAB related deadlines? (Updated May 4, 2020)

If an eligible document or fee was or is due between (and inclusive of) March 27, 2020, and May 31, 2020, the filing will be considered timely if filed on or before June 1, 2020, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.

Question 2: Does the statement that the delay in filing or payment was due to the COVID-19 outbreak need to be verified or in the form of a declaration or affidavit? (Posted April 6, 2020)

No, the statement need not be verified or provided in affidavit or declaration form. The statement may be provided in the relevant Trademark Electronic Application System (TEAS) or Electronic System for Trademark Trials and Appeals (ESTTA) form or included in the document being filed. People providing such statements to the Office are reminded that they constitute a certification under 37 CFR § 11.18(b) and that violations of 37 CFR § 11.18(b) may be subject to sanctions pursuant to 37 CFR §§ 11.18(c) and (d).

Question 3: What is the standard for determining whether the delay in filing or payment was due to the COVID-19 outbreak? (Updated May 4, 2020)

A delay in filing or payment is due to the COVID-19 outbreak if the outbreak materially interfered with timely filing or payment. Note that “materially” as used in the CARES Act notice is intended to have its plain meaning of “substantially or considerably” and is not intended to invoke other legal standards, such as the “material event” standard used in financial reporting regulations.

Question 4: What circumstances qualify as materially interfering with timely filing or payment? (Posted April 6, 2020)

Circumstances that qualify as materially interfering with timely filing or payment include, without limitation, office closures, cash flow interruptions, lack of access to files or other materials, travel delays, personal or family illness, or similar circumstances.

Question 5: Who must have been affected in order to take advantage of the period of relief? (Updated May 4, 2020)

The person affected by the COVID-19 outbreak may be a practitioner, applicant, registrant, or other person associated with the filing or fee.

Question 6: How do I determine my new Trademark or TTAB filing deadline? (Updated May 4, 2020)

If the original due date for the filing was between (and inclusive of) March 27, 2020, and May 31, 2020, the new filing deadline is June 1, 2020.

Question 7: Can I obtain an extension of time for a filing or fee not already provided in one of the relief notices? (Posted May 4, 2020)

If you wish to request a waiver of a non-statutory deadline or a fee, beyond what is set out in the relief notices, you must file a Petition to Director. Please see Chapter 1700 of the Trademark Manual of Examining Procedure regarding the rules and procedures for petitions. For more information contact:

Question 8: Will the USPTO further extend the CARES Act relief? (Updated May 4, 2020)

The USPTO will continue to evaluate the evolving situation around the COVID-19 outbreak and the impact on the USPTO’s operations and stakeholders. If the USPTO further extends the CARES Act relief, the USPTO will provide timely notice. 

Question 9: Will these FAQs be modified? (Posted April 6, 2020)

The USPTO will continue to evaluate the evolving situation and will update these FAQs as needed.

 

Trademarks-Specific FAQs

Question 10: What Trademark filings are eligible for the period of relief? (Updated May 4, 2020)

The following filings are eligible for the period of relief:

  • response to an Office action, including a notice of appeal from a final refusal under 15 U.S.C. § 1062(b) and 37 C.F.R. §§ 2.62(a) and 2.141(a)
  • statement of use or request for extension of time to file a statement of use under 15 U.S.C. § 1051(d) and 37 C.F.R. §§ 2.88(a) and 2.89(a)
  • priority filing basis under 15 U.S.C. § 1126(d)(1) and 37 C.F.R. § 2.34(a)(4)(i)
  • priority filing basis under 15 U.S.C. § 1141g and 37 C.F.R. § 7.27(c)
  • transformation of an extension of protection to the United States into a U.S. application under 15 U.S.C. § 1141j(c) and 37 C.F.R. § 7.31(a)
  • affidavit of use or excusable nonuse under 15 U.S.C. § 1058(a) and 37 C.F.R. § 2.160(a)
  • renewal application under 15 U.S.C. § 1059(a) and 37 C.F.R. § 2.182
  • affidavit of use or excusable nonuse under 15 U.S.C. § 1141k(a) and 37 C.F.R. § 7.36(b)

Question 11: Will TEAS accept a filing made under the CARES Act extension? (Posted April 6, 2020)

Yes. TEAS will accept your filing. Locate the TEAS form for the filing you need to make, enter the required information for the filing, and add a statement that the delay in filing or payment was due to the COVID-19 outbreak in the “Miscellaneous Statement” field of the form you are filing. Contact TEAS@uspto.gov if you have questions about how to submit the filing.

Question 12: Is the USPTO open for filing Trademark documents and fees even though its offices are closed to the public? (Posted April 6, 2020)

Yes, the USPTO is open for the filing of Trademark documents and fees. Use TEAS for all Trademark application and post-registration filings. For more information, see the mandatory electronic filing webpage.

Question 13: Can you provide guidance on how to file a petition with the petition fee waived? (Updated June 9, 2020)

The USPTO will continue to waive the petition fee for petitions to revive applications or reinstate registrations that, respectively, became abandoned or expired/canceled, as a result of the COVID-19 outbreak, on or before June 30, 2020, provided that such petition includes a statement that the delay in filing or payment was due to the COVID-19 outbreak. 

  • Applicants who were unable to submit a timely response or fee in response to an Office communication should file a TEAS Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action form or Petition To Revive Abandoned Application - Failure To File Timely Statement Of Use Or Extension Request form. The first of these two forms should be used to indicate that a notice of appeal to the TTAB from a final Office action is also being filed. 
  • For abandoned applications where the 36-month statutory deadline for filing a Statement of Use (SOU) was missed because of the COVID-19 outbreak, applicants should use the TEAS Petition to Director form to request the acceptance of a late-filed SOU, which must be included with the petition. 
  • For canceled/expired registrations where a statutory deadline was missed or the registrant was unable to submit a timely response or fee in response to an Office communication, the trademark owner should use the TEAS Petition to Director form to request the acceptance of the late-filed post-registration maintenance document or response, which must be included with the petition. 

In all cases, the petition must include a statement explaining that the failure to respond to the Office communication was due to the COVID-19 outbreak. The petition to revive forms will require payment of the petition fee in addition to any other required fees. However, after the petition is submitted, the filer can email TMPolicy@uspto.gov to request a refund of the petition fee. The filer should include the serial number in the email. The Petition to Director form will allow the filer to bypass the payment page when submitting the document. Questions regarding how to access or submit the TEAS Petition to Director form should be addressed to TEAS@uspto.gov.

The petition must be filed not later than two months after the issue date of the notice of abandonment or cancellation. 37 CFR §§ 2.66(a)(1), 2.146(d)(1). If the applicant or registrant did not receive a notice of abandonment or cancellation, the petition must be filed 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). However, once the Director’s authority under the CARES Act expires, we will be unable to grant petitions requesting the acceptance of a filing after the statutory deadline has passed.

For more information, see the Office’s May 27, 2020, Update Regarding Certain Trademark-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act and Other Relief Available to Applicants, Registrants, and Others.

Question 14: If I have a question about CARES Act extensions, whom do I contact? (Posted April 6, 2020).

The USPTO welcomes inquiries regarding this notice:

  • Send an email to TMPolicy@uspto.gov.
  • If email submission is not feasible, please call the Trademark Office of Petitions at 571-272-8950.

 

TTAB-Specific FAQs

Question 15: What TTAB deadlines are eligible for the period of relief? (Updated May 4, 2020)

The deadlines for the following TTAB filings are eligible for the period of relief:

  • a notice of appeal from a final refusal under 15 U.S.C. § 1062(b) and 37 C.F.R. § 2.62(a)
  • a notice of opposition or request for extension of time to file a notice of opposition under 15 U.S.C. § 1063(a) and 37 C.F.R. §§ 2.101(c) and § 2.102(a)

For all other situations where the COVID-19 outbreak has prevented or interfered with a filing before the Board, you can make a request (in ex parte appeals) or file a motion (for trial cases) for an extension or reopening of time, as appropriate.

Question 16: Will ESTTA accept a filing made under the CARES Act extension? (Posted April 6, 2020).

Yes. ESTTA will accept your filing. Locate the ESTTA form you need to file, enter the required information for the filing, add any necessary attachment, and add a statement that the delay in filing or payment was due to the COVID-19 outbreak in the attachment or appropriate field of the form you are filing. Contact TTABInfo@uspto.gov if you have questions about how to submit the filing. 

Question 17: Is the USPTO open for filing TTAB documents and fees even though its offices are closed to the public? (Posted April 6, 2020).

Yes, the USPTO is open for the filing of TTAB documents and fees. TTAB judges, interlocutory attorneys, and paralegals are teleworking. Your TTAB electronic filings are being processed by ESTTA, and TTAB correspondence to you is being sent electronically by email. To ensure receipt of electronic communications from the Board, make sure your application or registration includes an email address that can be used for correspondence.

Question 18: What do I need to do to obtain an extension for a TTAB filing? (Posted April 6, 2020).

Filing through ESTTA is required. See TTAB information on mandatory electronic filing. Include a statement that the delay in filing or payment was due to the COVID-19 outbreak.

Question 19: Will the TTAB grant a final 60-day extension of time to oppose because of the COVID-19 outbreak? (Posted April 6, 2020)

The effects of the COVID-19 outbreak are considered good cause in support of a second extension of time to oppose, if the first extension was a 30-day extension of time to oppose, or in support of an initial extension of 90 days to oppose, when a longer initial extension is desired. The effects of the COVID-19 outbreak also are considered extraordinary circumstances in support of the final 60-day extension of time to oppose. Fees for an extension requiring a showing of good cause or extraordinary circumstances are still required, even though the filing may be made later than when it would otherwise be due, if the delay in filing is due to the COVID-19 outbreak. When specifying the good cause or extraordinary circumstances, the statement that the delay was due to the COVID-19 outbreak can be included in the “other” basis for the extension.

Question 20: If I have a question about CARES Act extensions, whom do I contact? (Posted April 6, 2020)

The USPTO welcomes inquiries regarding this notice:

  • Send an email to TTABInfo@uspto.gov.
  • If email submission is not feasible, please call the TTAB at 571-272-8500.