Despite Coronavirus, USPTO Cannot Extend Certain Trademark Deadlines—But Will Waive Fees to Revive or Reinstate

An update to this post was published April 7.

Even though the United States Patent and Trademark Office (“USPTO”) acknowledged in a recent notice that the Coronavirus outbreak is an “extraordinary situation,” it explained that is nonetheless unable to grant waivers of extensions of certain trademark deadlines. These include the deadlines to file and pay the fees for the following:

• Statements of Use;
• Affidavits of Continued Use or Excusable Nonuse;
• Renewals; and
• Filing an Opposition or Cancellation Proceeding.

The USPTO has explained that it is unable to extend these deadlines or waive the associated fees because they are set by statute. In contrast, the USPTO does have flexibility when applying fees for petitions to revive an abandoned application or to reinstate a canceled or expired registration, which are set by regulation.

It would be best if all applicants and registrants could file these documents timely if they are able. However, for those who are unable to timely respond because of the effect of the Coronavirus outbreak, the notice states that the USPTO will waive the petition fees to review applications and registrations that are abandoned, canceled, or expired. The petition must include a statement explaining how the failure to respond was due to the effects of the outbreak and must be filed within two months of the issue date of the notice of abandonment or cancellation or, if the applicant or registrant did not receive a notice of abandonment or cancellation, within six months after the date the USPTO’s electronic records system indicates that the application is abandoned or the registration is canceled or expired.

You can read the full notice issued by the USPTO here.

Elizabeth M. Stamoulis
estamoulis@williamsparker.com
941-552-5546