Pursuant to the Trademark Modernization Act of 2020 (“TMA”), changes to certain procedural rules for ex parte trademark prosecution are now being implemented at the U.S. Patent and Trademark Office (“USPTO”). One of these changes concerns the amount of time applicants will have to respond to office actions, which Examining Attorneys periodically issue to address deficiencies in connection with trademark applications and registrations. Failure to respond typically results in abandonment of the application or registration at issue.
Previously, upon issuance of an office action, applicants had six months to file a response. Beginning December 3, 2022, applicants will now have three months to respond to office actions issued during the application process, though applicants can obtain a three-month extension for a $125 fee. This shortened response period will also apply to post-registration office actions issued on and after October 7, 2023.
One exception is office actions issued in connection with applications filed pursuant to Section 66(a) of the Lanham Act, the time period for responding to which will remain at six months.
The USPTO has stated that the shortening of office action response times is “intended to promote efficiency in examination by shortening the prosecution timeline for applications with issues that are relatively simple to address, while providing sufficient time, through an optional extension, for responses to Office actions with more complex issues.” In addition, the USPTO has stated that “shorter response periods may result in faster disposal of applications and thus reduce the potential delay in examination of later-filed applications for similar marks.” See here.