The United States Patent & Trademark Office made a major change to the trademark application process in December 2022. In an effort to speed up the process, the USPTO has decreased the amount of time that applicants have to respond to most office actions. This change is meant to help address recent delays in processing times and is part of implementation of the Trademark Modernization Act.
When Are Office Action Responses Due?
If you receive an office action after filing a trademark application, in most cases you will have three months from the date the office action was issued to respond. Previously, applicants were allowed a full six months to respond. By shortening the response time, the Trademark Office hopes to move applications along more quickly, which is understandable given their increasing workload and associated delays in processing applications.
Keep in mind that if you fail to meet the deadline (or file an extension as detailed below), your application will go abandoned. If that happens you may or may not be able to revive the application later on. The best thing would be to avoid abandonment altogether by meeting any applicable deadlines for filing.
What Are the Exceptions To the New 3-Month Rule?
In most cases you will have three months to respond to an office action. However, that is not always the case. The following are the most common situations where you will still have six months to file your office action response:
- Your application was filed under the Madrid Protocol / §66(a) filing basis
- Post-registration office actions (received after filing a renewal)
- The office action does not specify that the deadline for a response is three months
Extensions of Time to File an Office Action Response
If you are running up against the deadline but need more time to file a response, you can buy yourself an extra three months to respond. This is done by filing a Request for Extension of Time to File a Response. The USPTO charges a filing fee of $125 to request the extension (and if working with an attorney you will also likely have a legal fee).
Have You Received an Office Action?
Office actions are one of the biggest obstacles for any trademark application. They can be difficult to overcome, especially if you are not represented by an attorney that understands the trademark registration process. If you would like assistance with your application, please feel free to call me at (480) 360-3499, email me at firstname.lastname@example.org, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.