Starting on December 3, 2022, the timeframe for trademark applicants to respond to office actions at the U.S. Patent and Trademark Office (“USPTO”) will be shortened from six months to three months. This change is the result of the implementation of the Trademark Modernization Act of 2020 (“TMA”). You can find more information on the TMA in our article here.
Applicants (or applicants’ counsel) may request an additional three months to file responses with the payment of a $125 fee. The new response period will apply for office actions issued on or after December 3, 2022, against pending applications. Post-registration office actions will continue to have a six-month reply window until October 7, 2023.
By shortening the response time, the USPTO aims to increase speed of examination of trademark applications, while allowing flexibility to request additional time to address more complicated issues.
The shortened deadlines are not applicable to all types of trademark applications. Specifically, they do not apply to U.S. extensions of International Registrations filed under the Madrid Protocol under Section 66(a) of the Trademark Act. All other applications (use-based applications under Section 1(a), intent-to-use applications under Section 1(b), and applications filed on the basis of foreign filings under Sections 44(e) and 44(d)) are subject to the new deadlines.
Norton Rose Fulbright’s IP Brands team is closely monitoring developments with the implementation of the Trademark Modernization Act of 2020. The updated response deadlines mean proactive portfolio management will be more important than ever. Our clients are our top priority, and we will continue working to keep you informed and guiding you through the trademark registration process as efficiently as possible.