As of December 3, 2022, most trademark applicants will no longer have six months to respond to Office Actions. Instead, applicants will have a shortened response deadline of three months from the date of issuance, with an option for a three-month extension. The US Patent & Trademark Office (USPTO) states that the purpose of this rule is to decrease the time it takes to get and maintain a registration.
The new response period applies to most application filing bases, except the response deadline for Extensions of Protection under the Madrid Protocol (Section 66(a)) will remain the same at six months.
The new response period will not apply to Post-Registration Office Actions until October 7, 2023.
Applicants may request a one-time, three-month extension of time for filing a response to an Office Action for a fee of $125.00. This request can only be made if a response has not been filed. A Request for Extension of Time to File a Response form must be filed on or before the initial three-month response deadline. If the USPTO grants the request, the response to the Office Action must be received by the USPTO within six months of the date of issuance of the Office Action.
If the three-month deadline is missed with no extension filed, the application will be abandoned and either a Petition to Revive the application or a new application must be filed.
What Happens Now?
Our practice of reporting Office Actions to you with notification of the response deadline, and with sufficient time to respond, will continue. Our Office Action reports will note the option to extend the time to respond, and we will advise you whether we believe an extension is needed or recommended.