Legal Alert

Trademark Office Shortens Deadline to Respond to Office Actions

by Jodi A. DeSchane and Lara M. Ruggerio
October 26, 2022

The United States Patent and Trademark Office (USPTO) is amending the rules of practice in trademark cases to implement provisions of the Trademark Modernization Action of 2020 (TMA). Effective December 3, 2022, the period to respond to most application Office Actions is being reduced to three months with the option to request a single, three-month extension of the deadline for a fee of $125.

Currently, if the USPTO reviews a trademark application and issues an Office Action, the applicant has six months to respond. Beginning with Office Actions issued on and after December 3, 2022, the period to respond will be limited to three months. This change applies to the majority of applications including use-based applications under Section 1(a) of the Trademark Act, intent to use applications under Section 1(b) of the Trademark Act, and applications based on foreign registrations under Section 44 of the Trademark Act. However, this change does not apply to applications submitted pursuant to the Madrid Protocol under Section 66(a) of the Trademark Act, for which the response period will remain at six months given the additional processing time these application take.

The USPTO hopes the reduced response deadline will decrease the overall amount of time from submission of a trademark application to issuance of a trademark registration. The USPTO recognizes, however, that some Office Actions require more detailed responses and additional time may be needed. Therefore, the applicant may obtain a one-time, three-month extension for a $125.00 fee.

If an applicant does not respond to an Office Action or request an extension on or before the three-month deadline, the application will be abandoned. If an application is abandoned but the applicant still wants to pursue a trademark registration, the applicant may file a petition to revive the application for a fee if the requirements, which depend on the reason the application was abandoned, are met. Otherwise, the applicant must start the application process over again.

Changes to the response deadline for post-registration Office Actions are currently scheduled to be implemented on October 7, 2023, which will allow the USPTO additional time to update IT systems for the post-registration changes.

Attorneys in Ballard Spahr’s Intellectual Property Department welcome the opportunity to discuss the potential impact of this change on trademark registration strategy in the United States. Please contact us for more information.

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