Historically, applicants for the registration of trademarks in the United States have had 6 months to respond to an Office Action. Beginning December 3, 2022 the time limit has been shortened to 3 months.
Applications subject to the new rule
The new, shorter deadline applies to most kinds of trademark applications, including:
- Section 1(a) applications (application based on use in commerce)
- Section 1(b) applications (application based on intent to use)
- Section 44(e) applications (foreign application)
- Section 44(d) applications (foreign application)
Applications not subject to the new rule
The new deadline does not apply to:
- Section 66(a) applications (Madrid Protocol)
- Office actions issued before December 3, 2022
- Office actions issued after registration (But note that the new deadline will apply to post-registration Office Actions beginning October 7, 2023)
- Office actions 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
- Office actions that do not require a response (such as an examiner’s amendment)
- Office actions that do not specify a 3-month response period (e.g., a denial of a request for reconsideration, or a 30-day letter).
Extensions
For a $125 fee, you can request one three-month extension of the time to respond to an Office Action. You will need to file the request for an extension within three months from the “issue date” of the Office Action and before filing your response. If your extension request is granted, then you will have six months from the original “issue date” to file your response.
Use the Trademark Office’s Request for Extension of Time to File a Response form to request an extension. The Trademark Office has issued a warning that it will not process requests that do not use this form.
The form cannot be used to request an extension of time to respond to an Office Action that was issued for a Madrid Protocol section 66(a) application, an Office Action that was issued before December 3, 2022, or to an Office Action to which the new deadline does not apply.
Consequences
Failing to meet the new three-month deadline will have the same consequences as failing to meet the old six-month deadline did. Your application will be deemed abandoned if you do not respond to the Office Action or request an extension on or before the three-month deadline. Similarly, your application will be deemed abandoned if you you are granted an extension but fail to file a response on or before the six-month deadline.
The Trademark Office does not refund registration filing fees for abandoned applications.
As before, in some limited circumstances, you might be able to revive an abandoned application by filing a petition and paying a fee. Otherwise, you will need to start the application process all over again.
Contact attorney Thomas James
Need help with trademark registration? Contact Thomas B. James, Minnesota attorney.
About the Author: Written by Thomas James, a licensed attorney with a practice focused on trademark and copyright protection for creators, entrepreneurs, and nonprofits. He is an accomplished author of legal texts and is admitted to practice before the Bar of the United States Supreme Court.
Disclaimer: The information in this blog post is for general informational and entertainment purposes only and does not constitute legal advice or establish an attorney-client relationship. While I am an attorney, I am not your attorney. If you need legal advice, you should retain or consult with an attorney.
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