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USPTO to Shorten Deadline to Respond to Trademark Office Actions to Three (3) Months Effective December 3, 2022

U.S. trademark practitioners will no longer have a six-month window to respond to Office Actions issued by the United States Patent and Trademark Office (“USPTO”) on certain pending trademark applications.  

As of DECEMBER 3, 2022, the time in which an applicant must respond to an Office Action will be cut in half, from six months to three. As a result of the new rule, trademark practitioners will need to timely report the Actions in order to allow their clients sufficient time to address any questions and provide instructions.  When reporting Official Actions issued on or after December 3, 2022, practitioners are well-advised to alert their clients to the new, shortened deadline and to request prompt instructions for responding. Deadline docketing procedures will need to be adjusted to account for the new timing for Office Action responses. 

In the event that it is not possible to file a response within the new three-month term, an additional three month extension can be requested; however, all extensions will incur an Official Fee of $125.  Failure to either respond within the initial three-month term or request an extension will result in abandonment of the application.  

Exceptions

For now, the new three-month response period applies only to Official Actions issued in connection with pending trademark applications based on use, intent to use, or foreign priority.  For all post-registration Office Actions, the three month response deadline will become effective in October 2023. As of now, there is no word on whether the response deadlines for trademark applications filed under the Madrid Protocol Section 66(a) will be affected. 

A summary of the new rule is as follows:

Effective December 3, 2022 

Applies to Trademark Applications Based on:

  • Use in commerce Section 1(a)

  • Intent to Use Section 1(b)

  • Foreign Application Section 44(d)

  • Foreign Registration Section 44(e)

Effective October 2023

Applies to all Post-Registration Actions

No Change

Applies to applications filed under Madrid Protocol Section 66(a)

Copyright © 2023 Womble Bond Dickinson (US) LLP All Rights Reserved.National Law Review, Volume XII, Number 315
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About this Author

Lori Cohen Intellectual Property Attorney
Senior Counsel

Lori has represented Fortune 100 clients in the procurement and protection of well-known trademarks domestically and internationally. She concentrates her practice on all aspects of international and domestic trademark prosecution and international opposition and cancellation proceedings. Her client representation spans a wide range of industries, including alcoholic beverages, automotive, apparel, jewelry, food, nutraceuticals, and pharmaceuticals.

332-258-8440
Erica Halstead Intellectual Property Attorney
Of Counsel

Erica’s practice is focused on the procurement and protection of well-known trademarks both domestically and internationally. She is skilled in all areas of U.S. trademark prosecution, including policing, enforcement, clearance, and counseling. Erica represents clients before the U.S. Trademark Trial and Appeal Board in both opposition and cancellation proceedings and ex parte appeals.

She has extensive experience in negotiating trademark assignments, licenses, and coexistence agreements (both domestic and worldwide), preparing and...

332-258-8430
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