What is the new deadline to respond to trademark Office Actions?
When you’ve practiced trademark law long enough, you take certain things for granted. Things like Office Action deadlines never seem to change. Patent Office Action deadlines are extendable. And, until recently, trademark Office Action deadlines were not extendable. Things change. Except for Madrid applications, the trademark Office Action deadline has been reduced from 6 months to 3 months from the issue date. If more time is needed, applicants can now file a trademark extension request to respond to an Office Action.
When is the trademark extension request due?
A request for an extension of time to respond to a trademark Office Action must be filed by the new 3-month deadline. Unlike patent extension requests which are filed concurrently with the response, and therefore applied retroactively, trademark extension requests must be filed within 3 months from the Office Action date.
While patent applicants have the luxury of waiting to the last minute to decide if they want to file a Office Action response with the requisite extension request and corresponding USPTO fee, trademark applicants must decide by the 3-month deadline if they want to request an extension.
Which trademark applications do not have the new response deadline?
Trademark applications based on the Madrid Protocol [Section 66(a)] do not have this 3-month deadline. US trademark applications that received an Office Action dated before December 3, 2022 will still have the old 6-month period for response.
Post-registration Office Actions will not be subject to this new deadline.
What is the new extended trademark deadline?
By filing a timely extension request, the extended deadline is 6 months from the Office Action date. No further extensions are available, so the extended 6-month deadline is your drop dead date (DDD).
What if you don’t file a timely response or extension request?
Your trademark application will be abandoned. If circumstances support a revivial, you may be able to file a petition to revive. If granted, you get to keep the earlier filing date of your original application. Otherwise, you may need to file a new trademark application.
How does this new deadline help suspended applications?
Trademark applications may be suspended pending the outcome of another earlier-filed application. It can take years to wait for the outcome of a prior-filed application. In the past, the earlier filers would have had 6 months to respond to an Office Action. Now they have only 3 months unless they file a timely extension request.
So this new deadline has the potential to speed up the outcomes of prior-filed applications. As a result, suspended applications may see examination resumed sooner under these new deadlines.
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