Effective December 3, 2022, a United States Patent & Trademark Office (USPTO) rule change implements a shortened deadline for responses to office actions issued during the examination of trademark applications. With this change, the USPTO seeks to shorten the time from trademark application to registration while allowing the flexibility of requesting additional time to respond.
For office actions dated December 3, 2022, or later, the time period to respond is shortened from six months to three months. Extensions of time to respond of up to three additional months will be available upon request and a fee. The official fee for the extension request is US$125.
A request for a three-month extension of time can be filed at any time, however, any such request must be filed before the end of the initial three-month deadline set forth in the office action. An extension cannot be requested if a response has already been filed. If the extension request is granted, the USPTO must receive the response to the office action within six months of the “issue date” in the office action.
Notably, this shortened response period will not apply to applications filed under the Madrid Protocol (applications filed under Section 66(a) of the Trademark Act). For applications filed under the Madrid Protocol, the response period will remain six months. The rationale given for this is that additional processing time is required for these applications. The extension of time to file a response to office actions is not available for applications filed under the Madrid Protocol.
Also of note, the shortened response period under the new rule will not apply to post-registration office actions until October 7, 2023.
As with the current practice, if the deadline to file a response to an office action is missed (a response or extension request is not filed within the initial three-month response period, or a response is not filed within the extended response period) the application will become abandoned. Abandoned applications can be revived by petition.
If you have any questions, or if we could be of other assistance, please contact Linda Chan, Trademark Attorney, linda@leberiplaw.com.