Effective December 3, 2022, Deadline to Respond to Trademark Office Actions Shortened To Three Months

The United States Patent and Trademark Office (“USPTO”) announced that, beginning on December 3, 2022, the time for trademark applicants to respond to office actions will be shortened to three months.

This major change to trademark prosecution procedure cuts the current response deadline in half – from six months to three. Applicants will have the opportunity to request a single three-month extension for a $125 fee, provided that the extension request is filed on or before the initial deadline. Failure to respond or request an extension within three months of the issuance of the office action will result in abandonment of the application.

The shortened deadline applies to office actions issued on or after December 3 and applies to all application filing bases except international applications filed under section 66(a) of the Madrid Protocol. Pro se trademark applicants should carefully docket any response deadlines and, if they wish to seek counsel to assist with responding to an office action, reach out to an attorney as soon as possible. Trademark applicants who are already working with counsel should take care to provide prompt instructions to their attorneys following the issuance of any office action to ensure that this shortened deadline is not missed.

For now, the shortened response period only applies to pending trademark applications (not office actions issued after registration). However, the USPTO will implement the shortened response period for post-registration office actions on October 7, 2023.

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