The United States Patent & Trademark Office (USPTO) has announced that starting on December 3, 2022, those filing trademark applications will have three months (instead of the original six) to respond to office actions during the trademark examination process. Please note this is only applicable for office actions that are issued on or after December 3, 2022. By shortening the response time, the USPTO hopes to reduce the time for an applicant to receive a trademark registration, and to allow extra time to respond to complex office actions.
Please note that this new response time does not apply to post-registration office actions. Any changes to the post-registration response period will take place on October 7, 2023.
This new response period will apply to most application filings.
- Use in commerce section 1(a)
- Intent to use section 1(b)
- Foreign registration section 44(e)
- Foreign application section 44(d)
Does not apply to:
- Madrid Protocol section 66(a)
(It should also be noted that the deadline for responding to office actions for Madrid Protocol section 66(a) applications would stay at six months, since additional processing time will be needed.)
- Applicants should respond by the deadline (the three-month deadline can be calculated from the issue date in the office action) and when responding to any office actions, applicants must provide a completed response that makes note of ALL outstanding issues within the office action.
- For a fee of $125.00, it is also possible to request additional time to respond if you request a single three-month extension. The Request for Extension of Time to File a Response form can only be submitted if you have not already filed a response.
- A request must also be received on or before the initial deadline in your office action. If the extension request is granted, the USPTO must receive your response within six months of the “issue date” in the office action.
- You also cannot request an extension of time if you filed a Madrid Protocol section 66(a) application (or if your office action was issued before December 3, 2022, as the response period will remain at six months for those applications.)
- If a response deadline to an office action is not met, the application will then be abandoned. However, for a fee, you can petition to revive an abandoned application or you can restart the application process.