Public Service Announcement — USPTO Implements New Deadlines to Respond to Office Actions for Trademark Applications and RegistrationsDecember 6, 2022

As of  Saturday, December 3, 2022, trademark applicants will have three months (with a possible three-month extension) to respond to an Office action issued during the examination of a trademark application at the United States Patent and Trademark Office (USPTO) instead of the current six months.

A similar timeline for responding is already employed by the United States Patent and Trademark Office for responding to Office actions issued during examination of patent applications, however the procedure of requesting extensions of time is quite different.

This same change will go into effect for post-registration office actions on October 7, 2023. By shortening the response time, the USPTO intends to: decrease the time it takes to get and maintain a registration; and provide the flexibility to request additional time to respond to more complex office actions.

The new deadline applies to Office actions that meet all of the following conditions: (i) issued on or after December 3, 2022; (ii) issued by the law offices; (iii) issued before registration in applications based on sections 1 or 44; (iv) requires a response; and (v) specifies that the response period is three months.

The new deadline does not apply to Office actions that meet any of the following conditions: (i) issued before December 3, 2022; (ii) issued after registration; (iii) issued by a work unit other than the law offices, such as the Intent-to-Use Unit or the Examination and Support Workload and Production Unit; (iv) doesn’t require a response (such as examiner’s amendments); and (v) doesn’t specify that the response period is three months (such as denials of requests for reconsideration, 30-day letters/notices of incomplete response, and actions continuing a final).

The *one-time* three-month extension costs $125.

Notably, the applicant must file the request for an extension before the response is filed. Once the extension request is granted, then USPTO must receive the response within six months of the “issue date” in the Office action. If an appeal to a final office action is to be filed, either instead of or in addition to the response, and the extension request was granted, the appeal must also be filed within six months of the issue date in the Office action.

To file an extension request: the applicant must (a) use the Request for Extension of Time to File a Response form; (b) pay the $125 fee; (c) file the request within three months from the issue date in the Office action; and (iv) file the request before the applicant files a response or appeal. The USPTO warns that if any form other than the Request for Extension of Time to File a Response form is used, the request will not be processed. The application will be abandoned if no response is filed and no request for an extension is filed on or before the three-month deadline. Also, the application will be abandoned if an applicant files an extension request and it is granted, but then a response is not filed on or before the six-month deadline. If the application becomes abandoned, it will not move forward or be processed by the USPTO, and the filing fee will not be refunded.

There are limited circumstances where an applicant can’t request an extension of time to respond to an office action. These include those (1) issued for a Madrid Protocol section 66(a) application; (ii) issued before December 3, 2022; and (iii) if the new deadline does not apply to the Office action.

Partial abandonment procedures remain unchanged. If the Office action was limited to particular goods, services, or classes, the application will abandon only as to those particular goods, services, or classes.

Under certain circumstances, an applicant may be able to revive the application by filing a petition and paying a fee. If granted an extension but abandoned because the applicant didn’t file a response within six months, the applicant cannot claim non-receipt of the office action in a petition to revive the application.

If an applicant did not file a petition, the only option is to start the application process over again.

Gregory Lars Gunnerson is an Intellectual Property Attorney in the Mechanical and Electrical Patent Practice Groups at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Lars directly via email at gregory.gunnerson@ipmvs.com.

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