Murtha Means More

New Deadline to Respond to Office Actions for Trademark Applications

November 14, 2022

The United States Patent and Trademark Office has shortened the deadline for responding to Office Actions regarding trademark applications. Beginning on December 3, 2022, trademark applicants will have three months, instead of the original six months, to respond to Office Actions. This change applies to all applications filed directly with the USPTO, regardless of filing basis.

However, it does not apply to Requests for Extensions of Protection under the Madrid Protocol, which will keep the six-month deadline. 

An Office Action is a written communication from a trademark examining attorney refusing registration on statutory grounds or requiring amendments to the application to comply with USPTO requirements. Roughly 60% of trademark applications receive at least one Office Action. That number is closer to 85% for applications using non-standard identifications of goods and services.

An applicant requiring additional time to respond to an Office Action must request a three-month extension of time and pay a $125 USPTO fee. This request must be received on or before the three-month deadline listed in the Office Action and can only be filed if a response hasn’t already been submitted. Failure to respond or request an extension within the three-month period will result in the USPTO declaring the application abandoned. If the request for an extension is granted, the USPTO must receive the response within six months of the date the USPTO issued the Office Action. 

This change will only apply to Office Actions issued on or after December 3. For Office Actions issued before December 3, 2022, the six-month deadline applies, and no extensions of time are available. 

This new response period beginning December 3, 2022 will not apply to Post-Registration Office Actions. Changes to the post-registration response period will be implemented on October 7, 2023. 

Applicants and their counsel will have to update docketing systems and forms to account for the changed deadline and must make quicker decisions about responding to Office Actions in order to avoid taking extensions.

If you have any questions regarding this change or how it may impact you or your trademark filings, please contact Andy I. Corea at (203) 772-7739 or acorea@murthalaw.com

Law clerk Lindsey McComber assisted wth the preparation of this alert. 

 

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