USPTO Office Action Response Time Shortened
USPTO Trademark Response Time Change - Shortened to Three Months
In the past couple of years, the United States Patent and Trademark Office (USPTO) has experienced lengthy delays in reviewing applications and maintenance filings. However, the USPTO implemented changes via the Trademark Modernization Action of 2020 (TMA) in an effort to decrease the time it takes to get and maintain a registration. The burden, however, is being placed on the Applicant response time.
Trademark Response Time Change
Starting on December 3, 2022, most new Office Actions will have a 3-month deadline for response shortened from the previous 6-month deadline. Applicants needing additional time to respond will be allowed to request one 3-month extension to the deadline with payment of an additional government fee of $125.
Currently, if the USPTO issues an Office Action, the response time has been 6-months. But, starting on December 3, 2022, new Office Actions issued will include a statutory response deadline of 3-months. This change applies to most types of applications, including Section 1(a) applications claiming use, Section 1(b) applications with intent-to-use, and Section 44 applications based on foreign applications/registrations under the Paris Convention. The shortened response time will not apply to Section 66(a) applications filed pursuant to the Madrid Protocol, which typically require extra time for administrative processing.
There will also be a 3-month shortened time period for responses to post-registration Office Actions, but that will not go into effect until October 7, 2023.
Prosecution Strategy and Response Time Change
While the shortened time period for response should help to speed up the process for obtaining registrations and final outcomes for trademark owners, it can also place some stress in the prosecution process under certain situations. Trademark attorneys often use timelines to help with strategy in prosecution in circumstances where third party rights are of issue or when timing is significant, such as when the use of a mark plays into options available. Due to the significantly shortened response times, it is important for trademark owners to discuss the changes with their trademark attorneys to help ensure an understanding of potential changes in filing strategies.
Key Takeaways on USPTO Trademark response Time Changes
The USPTO’s change in time for response to office actions can be significant and should be taken into consideration by applicants and attorneys because:
it will help force quicker response times and therefore quicker resolution on whether a registration will be obtained;
it will change options available for strategies in trademark filings since there will be less time available for resolving external issues that may be at play; and
the shortened time available for applicants/attorneys to respond can create time issues and/or additional costs for those with voluminous dockets or those short-staffed to draft responses.
For more information about trademark prosecution and registration services, see our Trademark Services and Industry Focused Legal Solutions pages.