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Legal Alert: USPTO Announces Further Relief for Certain Trademark-Related Fees and Deadlines

The USPTO announced on May 27 that it is granting further relief for certain trademark and Trademark Trial and Appeal Board (TTAB) fees and deadlines. The USPTO previously waived certain fees under its March 16 notice, as well as extended certain deadlines twice under its March 31 notice and its April 28 notice. Those notices expired on May 31. As businesses begin to reopen, some stakeholders will continue to require relief, particularly small businesses and individuals. Under the CARES Act, the USPTO will direct additional relief as follows:

  • Applicants who were unable to submit a timely response or fee in response to an Office communication should file a petition to revive the application. See 37 CFR §§ 2.6(a)(15), 2.66.
  • Applicants who missed the 36-month statutory deadline for filing a Statement of Use, and therefore their application has been abandoned, should use the TEAS "Petition to the Director" form. See 37 CFR § 2.146.
  • Registrants who missed a statutory deadline, resulting in a cancelled/expired registration, or who were unable to submit a timely response or fee in response to an Office communication regarding a registration, should use the TEAS "Petition to the Director" form. See 37 CFR § 2.146.

The USPTO will continue to waive the petition fee for petitions to revive applications or reinstate registrations that became abandoned or expired/canceled as a result of the COVID-19 until June 30, provided they are accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.

Regarding TTAB proceedings, parties can make a request (in ex parte appeals) or motion (for trial cases) for an extension or reopening of time if the COVID-19 outbreak prevented or interfered with a filing.

Please find the USPTO's full notice here.

The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.