Starting on December 3, 2022, the new deadline for trademark Office Actions is three months. Recently, the United States Patent and Trademark Office (“USPTO”) amended its Rules of Practice under the Trademark Modernization Act (“TMA”) of 2020. The new rules shorten the old, six-month deadline to three months.
Table of Contents
As an aside, the new three-month deadline does not apply to Madrid Protocol applications commonly filed by non-U.S. entities. However, there is a three-month change coming to Madrid Protocol applications in October 7, 2023.
Table: Does the Deadline for Three-Month Office Action Apply or Not?
Does the three month deadline apply? Below, I provide a table to make sense of any confusion.
|
Deadline Applies: |
Does Not Apply: |
| Issued by a “Trademark Law Office” | Issued by The Intent to Use Unit or the Examination & Support Workload and Production Unit |
| Sent on or after December 3, 2022 | Sent before December 3, 2022 |
| Requires a response | No response required (e.g., Priority Action or Examiner’s Amendment) |
| Explains that the response term is three months | Does not state that the deadline is three months |
| A Section 1 or 44 application type | Madrid Protocol Application (section 66(a)) |
Can I Extend the Deadline for a Trademark Office Action?
Yes, applicants can elect to extend the deadline by an additional three months on top of the new three-month trademark Office Action deadline.
However, you must take specific actions, such as:
- Filing the Request for Extension of Time to File a Response before the three-month deadline for the trademark Office Action;
- Paying a $125 fee;
- Providing the Request for Extension of Time to File a Response before any response or appeal.
Service: Office Action Responses
What Happens If I Miss the Deadline?
If you miss the deadline, then the USPTO will abandon your trademark application. You may revive your application for an additional fee. However, if you file an extension of time, but your application is later abandoned, you cannot claim you did not receive notice. In general, this sounds fair — by filing an extension, you claim to receive notice.
If you do not revive your application, the only alternative is to start the entire trademark filing process over again.
Conclusion and Recommendation
In conclusion, Syed Law can help you with answering your Office Action. We have experience answering trademark Office Actions and provide professional legal responses tailored to your needs. In fact, our law firm is a one-stop shop for businesses and brand owners seeking to protect their intellectual property and get the ®. Get started with a comprehensive search, filing, or Office Action response.
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