New Rule on Office Action Response Deadlines Effective December 3, 2022
As of December 3, 2022, the period for most trademark applicants to respond to office actions (effectively, a registration refusal) from U.S. Patent and Trademark Office (USPTO) is shortened from six months to three months. An applicant may extend the shortened period back to six months only by affirmatively filing a request and paying a $125 extension fee prior to the expiration of the three-month period.
The purpose of the new rule is to help the USPTO resolve the backlog of trademark applications (as of January 2023, it is taking an average of 18 months for new applications to move through the trademark registration process). According the USPTO, with the new rule in effect, “…the USPTO has the ability to move applications through the registration process more efficiently.”
This rule change comes as part of the Trademark Modernization Act of 2020 (TMA), which includes important changes to the prosecution and maintenance of trademarks. Most of the other provisions of the TMA went into effect on December 18, 2021.
While a more efficient trademark registration process is to be applauded, the shortened deadline does mean there are some pitfalls for applicants. Trademark applicants must be vigilant to adhere to the new response deadline, and attorneys must adjust their trademark prosecutions strategies accordingly. Failure to respond in time (or to file an extension in time) could result in the abandonment of trademark application and/or additional fees to extend response deadlines or revive abandoned applications. (Link to the USPTO TMA page here) District Trademark’s legal team is up to date on the TMA and other procedural updates at the USPTO. Please contact us at firstname.lastname@example.org with any questions or to discuss any legal trademark needs.