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Deadline Shortened to Three Months for Trademark Office Action Responses

On December 3, the U.S. Patent and Trademark Office (“USPTO”) will make a major change to how it processes trademark applications, which is anticipated to affect filing strategies, work flow, and even budgets. Brand owners in the U.S. might be wondering what they need to know about the Trademark Modernization Act’s (“TMA”) shortened office action response deadline. In attempt to answer this question and assist with preparation, this alert explains what is changing and how this new change impacts newly-filed trademark applications, existing registrations and other circumstances to consider.

To understand the change, it’s important to quickly recap the current rules. After a trademark application is filed with the USPTO, the first stage of prosecution is examination, during which an Examining Attorney substantively reviews the application to determine if it is eligible for registration. If any issue is identified, the Examining Attorney issues a non-final office action and the applicant is given six months to respond by either fixing the issue(s) or pleading its case. If an applicant’s response does not satisfy every issue raised, the Examining Attorney issues a final office action, which provides an applicant with a final six month window to resolve the issue(s) with the Examining Attorney or appeal to the Trademark Trial and Appeal Board. If an applicant does not respond to an office action before the deadline, the application will be deemed abandoned. 

However, on December 3, 2022, the TMA will shorten the six month response window for any office action (final or non-final) to just three months, with an additional three month extension available only with payment of a $125 fee.[1]

The shortened response window applies to any type of office action, whether it was issued during substantive examination, later on in the process when trying to prove use for an intent to use application, or even post-registration. However, in the case of post-registration office actions, issued in response to a renewal of registration, the shortened three month deadline will not be effective until October 7, 2023.[2] This change applies to all applications, except those filed under § 66(a)/the Madrid Protocol, which is a way to bring registrations in foreign countries into the US without proving use.

The goal of this provision of the TMA is to increase efficiency at the USPTO, which is still dealing with extensive delays caused by an unusually high volume of pending filings. Currently, the registration process takes about 18-24 months, with an initial delay of 6-9 months from filing to reach examination. The shortened response window is intended to help speed up the examination process.

For applicants (and eventually registrants), the shortened window may impact filing strategies and procedures.

For example, to obtain the three month extension, the request must be filed electronically on or before the initial three month deadline and be accompanied by a $125 fee. The extension will not be retroactive. If missed, the only option is to petition to revive, accompanied by payment of another fee. Therefore, an applicant should file for an extension as soon as it determines one is necessary, but no later than the initial three month deadline. This means earlier discussion of issues raised and quicker decision making will be needed to avoid inadvertent abandonment.

To determine whether an extension for an office action will be beneficial, an applicant should consider just how much time may be needed for a response. A few factors to consider include:

Another potentially beneficial wrinkle for experienced applicants is that although the period to file a Request for Reconsideration in response to a final office action will adopt the three month deadline, the deadline to file a Notice of Appeal will still be six months from the issuance of the final office action. As such, an applicant may strategically choose to respond to the final office action with a Request for Reconsideration before the original three month deadline and delay filing a Notice of Appeal. This two-fold approach could allow an applicant to see if there is a favorable decision issued prior to the Notice of Appeal deadline and potentially avoid both an extension fee and a Notice of Appeal fee.

As we prepare for the impending effective date on December 3, 2022, we urge trademark owners to strategically evaluate how this change may practically impact them. The practical implications for the shortened three month deadline necessitates ensuring one’s docketing system can adapt to the change. To do so, we recommend all trademark owners evaluate the need to update their docketing system, if it does not do so automatically. Further, trademark owners will need to account for how nuances are incorporated into their system, such as the differences between response times based on the filing basis. Lastly, the new timing will likely also impact a team’s work flow and budgets. Incorporating this change to timing in one’s work flow will help to ensure that the necessity and benefit of an extension is meaningfully considered and stakeholder expectations are managed. Before the effective date, trademark owners should therefore establish expectations when it comes to reporting, taking the extension, and deciding how to coordinate with both their internal stakeholders and outside counsel.

FOOTNOTES

[1] 37 C.F.R. §§ 2.6 (2021). If one files the extension via paper, it must be accompanied by a $225 fee.

[2] Changes to Implement Provisions of the Trademark Modernization Act of 2020; Delay of Effective Date and Correction, 87 Fed. Reg. 62032 (Oct. 13, 2022) (to be codified at 37 C.F.R. pt. 2), https://www.federalregister.gov/documents/2022/10/13/2022-22217/changes-to-implement-provisions-of-the-trademark-modernization-act-of-2020-delay-of-effective-date.

Grant Monachino also contributed to this article.

© 2023 Dinsmore & Shohl LLP. All rights reserved.National Law Review, Volume XII, Number 312
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About this Author

Emily O. Douglass Intellectual Property Law Clerk Dinsmore & Shohl Cincinnati, OH
Law Clerk

Emily focuses her practice on intellectual property and trademark law. Her experience includes preparing and filing trademark applications, statement of uses, and renewals for a clothing company, preparing and filing U.S. copyright applications, and conducting copyright and trademark clearance reviews. She received her J.D. from The Ohio State University Moritz College of Law.

513-977-8208
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