USPTO Changes Office Action Response Time For Non-Madrid U.S. Trademark Applications

| Susan M. NatlandJonathan Hyman

The USPTO recently implemented a rule change affecting the deadline to respond to Office Actions issued in connection with U.S. trademark applications that were not filed through the Madrid system. Under the new rules, Office Actions issued on or after December 3, 2022, will have a three (3) month response deadline. This new deadline applies to pre-registration Office Actions, including Office Actions issued after the filing of a Statement of Use. Post-registration Office Actions are currently not subject to the new three (3) month response deadline, but will be after October 7, 2023. Under the old rules, the response deadline was six (6) months from the date of the Office Action.

Applicants can extend the three (3) month response deadline by a period of three (3) additional months by:

  • filing a request to extend with the USPTO, and
  • paying a US$125 USPTO fee (per application, not per class) on or before the initial three (3) month deadline.

No “cause” is required to support the extension; it will be granted by simply requesting the extra time and paying the fee. However, further extensions will not be allowed beyond the one-time three (3) month extension per Office Action.

This change was part of the Trademark Modernization Act to further its goal of speeding up the time it takes to secure trademark registrations. It remains to be seen if this change achieves this goal given the extension period. For example, applicants may need to request extensions of time if they: (i) are simply not ready to file a response to the Office Action; (ii) want to see if a cited registration is maintained; (iii) need to use a mark longer so the applicant can argue acquired distinctiveness under Section 2(f); (iv) need extra time to use a mark so the application can be amended to the Supplemental Register; or (v) need extra time to allow a foreign registration to issue so the applicant can perfect a “foreign registration” basis for the U.S. application.

It also may be more important to file Letters of Protest earlier than before. Once an application is approved for publication, the standard for granting a Letter of Protest is higher. Thus, if applicants adhere to the three-month response deadline, applications could be approved for publication faster.

Unrepresented foreign-domiciled applicants are required to appoint a qualified U.S.-licensed attorney to represent them before the USPTO in any application-related filing, including the filing of an extension of time to respond to an Office Action.