13 Apr Intellectual Property Operations During the Coronavirus Outbreak
The coronavirus (COVID-19) has affected a number of areas of our lives, especially when it comes to business to employment issues. The unprecedented health crisis has also affected trademark filing and applications, intellectual property owners, IP filings, litigation, and license agreements.
Fortunately, the Coronavirus Aid, Relief, and Economic Security (CARES) Act provides relief to intellectual property owners facing challenges when it comes to filing and responding to deadlines due to the pandemic. However, in order to be successful with these applications, deadlines, and extensions, working with an experienced attorney is highly advised, as there are specific requirements that accompany the Act’s provisions, as we discuss below.
Federal Applications to Register COVID-19-Related Trademarks
The coronavirus has reportedly inspired a number of entrepreneurs to file federal applications to register trademarks related to the COVID-19 epidemic. However, because most do not appear to have worked with a trademark attorney, they will likely fail to meet basic eligibility requirements for registration. For example, terms functioning as trademarks cannot simply be informational about the coronavirus or descriptive of the product; they must distinguish and identify the applicant’s products from other products. For example, a phrase that would not successfully survive the process would be something to the effect of “I survived the coronavirus.”
Patent and Trademark Deadlines Extended and Fees Excused Due to Coronavirus
A 30-day extension for deadlines affecting the following can be granted if you include a statement explaining how the late filing was due to the coronavirus outbreak:
- Affidavits of use or excusable nonuse
- Notices of opposition or requests for extensions to file
- Priority filing basis
- Renewal applications
- Responses to office actions, such as appeals from a final refusal
- Statements of use or requests for extensions to file
- Transformation of an extension of protection to the U.S. into a U.S. application
Also note that the petition fee can be waived for the TEAS “Petition to the Director” and “Petition to Revive Application” as long as the petition includes a statement explaining how the failure to respond was due to the coronavirus outbreak. Extensions of certain trademark trial and appeal board deadlines that were not listed in the notices may also be available, as the CARES Act provides authority to the Director of the U.S. Patent and Trademark Office (USPTO) to adjust, modify, waive, toll, etc. any deadline in order to bring relief to patent and trademark owners that are facing business uncertainties due to the virus. However, applicants in ex parte appeals will have to submit a request and those in trial cases will have to file a motion for an extension or reopening.
In addition, the CARES Act also allowed for the Copyright Office to do the same in terms of adjusting deadlines. As a result, the Copyright Office extended deadlines by 60 days for those affected by the crisis, including extending the three-month window to qualify for damages in copyright infringement cases if the copyright owner could not submit the electric filing or pay the deposit due to the pandemic.
Contact Top Copyright and Trademark Litigation Attorneys
Working with an experienced attorney right away if you have questions or concerns about any of these issues is highly advised due to how technical and specific the requirements are. Heerde Blum LLP litigators are licensed to practice in both California and New York, and have represented a number of parties in copyright, intellectual property, and trademark infringement issues. Contact us today to learn more about our services.