The last Trademarkology post (found here) identified ways in which the United States Patent and Trademark Office (the “PTO”) is working to relieve brand owners from some of the burdens imposed by the current Coronavirus pandemic. Since then, the PTO has issued further means of granting relief.1 Of most recent importance, the PTO has exercised certain powers granted to it under recent legislation. We have summarized them below and you can find the PTO statement here.
On March 27, 2020, the president signed the Coronavirus Aid, Relief, and Economic Security Act (the “CARES Act”) into law. The CARES Act empowers the PTO with temporary authority to modify, toll, waive, or adjust deadlines for filing certain documents and paying certain fees during the emergency period if the PTO finds that the emergency materially affects the PTO’s functioning, prejudices the rights of mark owners or others appearing before the PTO, or prevents mark owners or others appearing before the PTO from filing a document or fee with the PTO. The PTO has found that these conditions exist due to the COVID-19 outbreak.
In light of the empowerment granted by the CARES Act, the PTO will extend any of the following deadlines that fall between March 27, 2020 and April 30, 2020 for thirty (30) days from the initial deadline so long as the filing is accompanied by a statement that the delay in filing or payment is due to the COVID-19 outbreak as described below:
- Response to office action or notice of appeal;
- Statement of use or request for extension of time to file a statement of use;
- Notice of opposition or request for extension of time to file a notice of opposition;
- Priority filing basis;
- Transformation of an extension of protection to the U.S. into a U.S. application;
- Declaration of use or excusable non-use; or
- Renewal application.
For a delay to be due to the COVID-19 outbreak, the person affected must have been personally affected by the outbreak, including by office closures, cash flow interruptions, inaccessibility of files or materials, travel delays, personal or family illness, or similar circumstances, in such a way that the outbreak interfered with timely filing or payment.
If a filing before the Trademark Trial and Appeal Board (the “TTAB”) is not covered by the list above, the affected person may file a request or motion with the TTAB.
In addition to the relief described above, trademark registrants who are facing a deadline for filing a declaration of use necessary to maintain their registration during the pandemic should consider whether pre-existing procedures might provide available relief. For example, if a registrant has a deadline for filing a declaration of use necessary to maintain its registrant but finds it unable to prove current use of the mark because its services have been suspended during the pandemic, it should consider whether a declaration of excusable non-use may be warranted.
The Lanham Act requires registrants to file declarations of use periodically to confirm that the mark is in use in commerce with all the goods and services identified in the registration. The purpose of this requirement is to remove dead wood from the trademark register. But, if the mark is temporarily not in use due to circumstances beyond the registrant’s control, the registrant may be able to file a declaration of excusable non-use. Such a declaration must include information about the interruption, including when use of the mark stopped, when it is expected to resume, what steps the registrant is taking to resume use, and other facts that help show why the interruption to use occurred and why the lack of current use should be excused.
Only certain kinds of non-use are excusable and will allow the registrant to keep the registration in place without proving current use of the mark. The PTO provides some guidance about what kind of non-use counts as excusable non-use. In general, the registrant must show that non-use is due to special circumstances beyond the owner's control. Typical examples of excusable non-use include non-use due to trade embargo and temporary non-use due to sale of a business. Temporary non-use due to catastrophes may be excusable if the registrant arranges for resumption of use. Although the PTO manual does not specifically identify temporary closure of a business due to a pandemic as an excusable non-use, depending on the circumstances, this too may qualify.
Registrants facing difficulty meeting deadlines falling between March 27, 2020 and April 30, 2020 or finding themselves unable to prove current use of their mark in connection with a declaration of use deadline that falls during the pandemic should consult with counsel to assess whether one of the new or existing modes of relief may be available to them.
1For example, the PTO waived certain handwritten, ink signature requirements due to COVID-19. You can read the official PTO notice about these here.