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October 31, 2022

Three-Month Response Period For Office Actions Takes Effect Soon

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Key Takeaways

  • As part of the Trademark Modernization Act, the USPTO introduced a new deadline to respond to Office Actions to increase efficiency and flexibility.
  • Beginning on December 3, 2022, applicants will have a three-month to respond to Office Actions.

The Trademark Modernization Act of 2020 (TMA), which went into effect on December 18, 2021, was implemented to make the registration process at the United States Patent and Trademark Office (USPTO) more efficient. In response to a surge in trademark applications causing serious delays in application processing time at the USPTO, the TMA introduced a new deadline to respond to Office Actions in an effort to increase efficiency and flexibility.

This new practice will officially begin on December 3, 2022.

New Response Deadline

Under the USPTO's current practice, applicants have a six-month statutory period to respond to Office Actions. However, beginning on December 3, 2022, applicants will have a three-month period (with a possible three-month extension) to respond to Office Actions. The shortened response period only applies to Office Actions issued on or after December 3, 2022. Applicants that receive Office Actions prior to December 3 will continue to have a six-month response time.

An applicant requiring additional time beyond the three-month period to respond to an Office Action may request a single three-month extension by filing an extension request and paying the $125 government filing fee. The extension request must be received before the initial three-month response time has elapsed. Failure to either respond to an Office Action or request an extension within the initial three-month response time will result in abandonment of the application.

The new response period will begin to apply to post-registration Office Actions on October 7, 2023.

Applicable Applications

The newly implemented response time applies to the following applications:

  • Use in Commerce Applications under Section 1(a) of the Trademark Act, 15 U.S.C 1051(a)
  • Intent to Use Applications under Section 1(b) of the Trademark Act, 15 U.S.C 1051(b)
  • Foreign Applications under Section 44(e) of the Trademark Act, 15 U.S.C 1126(e)
  • Foreign Applications under Section 44(d) of the Trademark Act, 15 U.S.C 1026(d)

The six-month statutory period to respond to Office Actions will remain in effect for applications filed under the Madrid Protocol—an international trademark system allowing applicants to apply for protection in up to 128 countries.

Takeaways

Applicants must remain vigilant when receiving and responding to Office Actions under the new three-month deadline. Those who have received Office Actions with an issue date prior to December 3, 2022 continue to have a six-month response period. However, Office Actions issued on or after December 3, 2022 require a response within three months of the issue date of the Office Action. Applicants should continue to monitor the change in response time for post-registration office actions, which goes into effect October 7, 2023.

Buchanan IP has a talented bench of attorneys who can assist and advise on trademark matters including, clearance, enforcement, licensing, litigation, portfolio management and anti-counterfeiting protection.

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