A Change in Office Action Response Deadlines at the US Trademark Office

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Regulations implementing the Trademark Modernization Act of 2020 (TMA) went into effect on December 18, 2021. One change under the Trademark Modernization Act provides a new deadline period for responding to Office Actions in trademark applications. The prior deadline requirement of six months is now shortened to three (3) months with an option to request an additional three-month extension. The request for extension and $125 fee must be filed prior to the expiration of the initial three-month deadline. If neither a response nor an extension request is filed by the first three-month period, the trademark application will be deemed abandoned and a Petition to Revive will need to be filed to reinstate the application.

Since most applicants will try to file a response within the first three-month period to avoid the extension fee, the examination and registration process should be faster.

Our clients have already utilized the option to extend when more substantive issues need to be addressed in a response or when they are not ready to respond. The extension request process is straightforward and the extension is automatically granted upon submission if timely filed (unlike a Statement of Use extension request that needs to be reviewed prior to grant).

Because of the shortened response timing, applicants should conduct a trademark search prior to filing a trademark application to turn up any potentially conflicting marks that may result in substantive rejections requiring more time to address and respond.

Note that post-registration Office Actions will transition to the new deadline period on October 7, 2023. Also, Office Actions issued in Madrid Protocol section 66(a) applications will continue to have the six-month response deadline.

Vanessa M. D’Souza, Patent Attorney, New Orleans, 13 July 2023, VDSouza@patents.gs, (504) 835-2000, ext. 104;