Historically, trademark applicants have generally had six (6) months to respond to an Office Action issued by the United States Patent and Trademark Office (“USPTO”) for the response to be considered timely. This is a lengthy period, but at times, this lengthy time period could be beneficial to a client from a strategic standpoint.
However, the USPTO recently shortened this response period significantly beginning this month. For USPTO Office Actions issued as of December 3, 2022, applicants have three (3) months to respond to an USPTO Office Action. This shortening will be very helpful in moving applications along faster and in removing applications where applicants do not respond. For instance, at times a previously filed trademark application may be blocking registration for another applicant’s mark. Although one may sense that the blocking previously filed application will not be able to reach registration successfully (either due to an office action, going out of business, etc.), that previously filed application will sit on the record for six (6) months, and then for an additional two (2) month revival period. Meanwhile, the subsequent applicant’s trademark application sits on suspension throughout this time period, except in certain situations where there is a successful effort in getting the previously filed applicant to abandon its application or consent to the subsequent applicant’s registration. By cutting the response period in half, the previously filed application can be removed from blocking others who are seeking registration.
At times, however, applicants may need more time than 3 months to respond or the prior 6-month response may be beneficial for the applicant from a strategic standpoint. Thankfully, the USPTO will still allow an applicant to have the full six (6) months to respond to its Office Action; however, to obtain this additional time period, an applicant must request a three (3) month extension and pay a fee for the extension, which is currently $125.
For the time being, this shortened response period applies to trademark applications only – preregistration, and not post-registration office actions. The USPTO will not implement this shortened time-period for post-registration Office Actions until October 7, 2023.
From a practitioner’s standpoint, it will be important to advise clients of this shortened time frame upon receipt of an office action, and to advise clients that the remaining three (3) month period is still available when needed, but at an additional cost. Further, practitioners will want to ensure that their internal docketing and deadline systems are updated to reflect the shortened time-period, so that they are up to date on their clients’ trademark applications.
If you have any questions, please feel to contact Kimberly Grimsley or Jennifer Mumm.