The period to respond to office actions issued in trademark applications is being shortened.
On December 3 the United States Patent and Trademark Office will begin to implement provisions of the Trademark Modernization Act of 2020 which shorten the office action response deadline from six months to three months in trademark applications. The shortened deadline will continue to run from the issue date of the office action.
The shortened period for response applies to new office actions issued after December 3. The new deadline does not apply to Madrid Protocol section 66(a) applications. For these applications, the period for response will remain at six months.
The USPTO’s rationale for shortening the period for response is to increase efficiency and flexibility of the examination procedures. According to the Office, the shortened period for response will decrease the time it takes for the average application to reach a registration decision, while still providing flexibility to request additional time to respond to more complex office actions.
The shortened period for response means it is important for applicants and practitioners to act expeditiously. Failure to file a timely response will result in the abandonment of the application.
Extensions are available if a response cannot be prepared within the shortened time period. Applicants may request a single three-month extension for a $125 fee. However, Applicants should be aware that the request for the extension must be filed before the initial deadline has passed. This practice differs from requesting an extension to respond to a patent application office action, where the extension is requested after the initial deadline has lapsed.
About the Author
Scott is an intellectual property lawyer and registered patent attorney. Scott’s intellectual property practice includes patent prosecution, trademark registration, and post-grant proceedings before the Patent Trial and Appeal Board, such as inter partes review. Scott has extensive experience preparing infringement opinions and conducting validity analyses of competitor portfolios.
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