Now in Effect – 3-MONTH response time for some USPTO Trademark Application Office Actions
As part of the 2020 Trademark Modernization Act, the USPTO has cut the time to respond to certain Office Actions in half. This took effect Friday, December 2, 2022.
Trademark applicants are used to a 6-month window to respond to virtually all Office Actions that may arise when the USPTO prosecutes a trademark application. While this window is convenient, six months is often much more time than is needed to respond to an Office Action, and such a large window can unnecessarily extend the time it takes to receive a registration. By shortening the window, the USPTO should be able to speed up the time from application to registration, which is currently over one (1) year.
Should an applicant find the three-month window too narrow for a substantive response, for $125 the applicant can request an additional 3-months (for a total of 6-months) to respond.
Details from the USPTO on which Office Actions are subject to the new rules:
Office actions affected by the new deadline
The new deadline applies to office actions that meet all of the following conditions:
- Issued on or after December 3, 2022
- Issued by the law offices
- Issued before registration in applications based on sections 1 or 44
- Requires a response
- Specifies that the response period is three months
The new deadline does not apply to office actions that meet any of the following conditions:
- Issued before December 3, 2022
- Issued after registration
- 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
- Doesn’t require a response (such as examiner’s amendments)
- 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)
Source: https://www.uspto.gov/trademarks/laws/2020-modernization-act/new-response-deadline-applications
If you have a need to obtain a trademark or service mark registration, contact us. Businesses are better served by professionals who remain on the cutting edge of technology and the law. Hiring a trademark attorney who understands and follows the USPTO’s rules and policies is one important step in providing you with strategic IP solutions and not merely IP services.
Call or click here to get started on protecting your IP today.
