USPTO Shortens Deadline to Respond to Office Actions
Trademark applicants and practitioners should be aware of the impending new deadline for responding to office actions issued by the United States Patent and Trademark Office (USPTO) during the examination of a trademark application.
Effective for office actions issued on or after Dec. 3, 2022, the deadline to respond will be shortened to three (3) months from six (6) months. Applicants will have the option to extend the deadline for another three (3) months for a $125 fee, if the request for extension is filed before the three (3) month deadline.
The shortened response period will apply to most application filing bases, including Trademark Act Section 1(a) (use in commerce), Trademark Act Section 1(b) (intent to use), and foreign applications under Trademark Act Sections 44(d) and 44(e). The shortened response period will not apply to applications under Trademark Act Section 66(a) (Madrid Protocol) because those applications require additional processing time.
The USPTO will be implementing a similarly shortened deadline for responses to post-registration office actions in connection with the examination of registration maintenance documents. However, the shortened response period for post-registration matters will not become effective until Oct. 7, 2023.
The new deadlines are intended to promote efficiency and shorten the trademark application and prosecution timeline in accordance with the Trademark Modernization Act of 2020. These changes should benefit all trademark owners by encouraging faster processing of applications and review of post-registration maintenance documents. However, trademark applicants, owners, and practitioners must be vigilant in order to meet the expedited deadlines, or risk having their applications or registrations deemed abandoned.
If you have any questions, need guidance, or would like further information about the new deadlines, please contact Drew Patty, Diane Maughan, or any member of Phelps’ Intellectual Property team.
