Beginning on December 3, trademark applicants will have three months (with a possible three-month extension) to reply to office actions made during the examination of trademark applications at the United States Patent and Trademark Office (USPTO) as part of the Trademark Modernization Act of 2020. A similar amendment will be implemented for post-registration office actions next year (on October 7, 2023).
Since the Lanham Act was passed in 1946, applicants have had six months to reply to office actions. However, maybe because speedier communications are now possible, the USPTO believes that reducing the time limit to three months will accomplish the following:
- Reduce the amount of time required to obtain and maintain registration.
- Offer the option of requesting extended time (for a charge) to reply to more complicated office actions. The government filing fee for requesting an extension of three months is $125 (electronic filing) or $225 (paper filing).
There has never been a requirement for trademark applicants to wait the entire six months before filing a response to an unsettled office action, and there will never be a requirement for applicants to wait three months before filing. However, there may be strategic reasons for responding as soon as possible, whether that is three or six months.
If an applicant intends to apply for an extension of three months, the request can be made only if the applicant has not yet filed a response. The request must then be made within three months of the three-month deadline. If the request is granted, the reply must be filed within six months after the office action’s “issue date.”
The extended response timeframe applies to most application filing bases, including those under Lanham Act Sections 1(a) (use-based), 1(b) (intent-to-use), and 44 (foreign). However, it does not apply to applications made under the Madrid Protocol (Section 66(a)). The response time for those applications will remain at six months.
Lastly, if the reply to the office action is not filed on or before the three-month deadline or the later six-month deadline, the application will be rejected.
The list of US IP Firms can be found here.