The USPTO’s new three month response time to Office Actions

When you are choosing a trademark for your business, product or service, you want it to be distinctive and memorable. You want it to stand out from your competitors and convey your brand identity. You also want it to be eligible for federal registration and protection.

month calendar with red thumbtacks and the last day circled

If you have filed or are planning to file a trademark application with the U.S. Patent and Trademark Office (USPTO), you should be aware of a recent change that affects how much time you have to respond to office actions issued by trademark examining attorneys.

As of December 3, 2022, trademark applicants have only three months (with an optional three-month extension) instead of the current six months to respond to most office actions issued during the examination of trademark applications filed under sections 1 or 44. This change only applies to office actions issued on or after December 3.

By shortening the response time, the USPTO intends to decrease the time it takes to get a registration and improve efficiency and quality in trademark examination. The option to file an extension request provides flexibility for applicants who need more time to respond to more complex office actions.

What is an office action?

An office action is a letter from a trademark examining attorney that identifies any legal problems with your trademark application. It may also include suggestions on how to fix those problems. You must file a complete response that addresses all issues raised in the office action by the deadline specified in it.

There are different types of office actions depending on when they are issued and what they require. The new three-month deadline applies only to office actions that meet all of these conditions:

  • Issued on or after December 3, 2022

  • Issued by the law offices

  • Issued before registration in applications based on sections 1 or 44

  • Requires a response

  • Specifies that the response period is three months1

The new deadline does not apply to office actions that meet any of these conditions:

  • Issued before December 3, 2022

  • Issued after registration

  • Issued by a work unit other than the law offices, such as the Intent-to-Use Unit or the Examination and Support Workload and Production Unit

  • Doesn’t require a response (such as examiner’s amendments)

  • Doesn’t specify that the response period is three months (such as denials of requests for reconsideration, 30-day letters/notices of incomplete response, and actions continuing a final)

How do I file a response?

You can file your response online using one of these forms:

  • Response to Office Action Form

  • Request for Reconsideration after Final Office Action Form

You must file your response on or before the deadline indicated in the office action. You can calculate the three-month deadline from the “issue date” in that action. When responding to office actions, make sure you’re providing a complete response that addresses all outstanding issues in the office action.

What if I need more time to respond?

If you need more time to respond to an office action, you can request one three-month extension for a $125 fee. You must file the request for an extension before you file your response and before the end of the initial three-month period. You can file your extension request online using this form:

  • Request for Extension of Time to File a Response

If your extension request is granted, you will have a total of six months from the issue date of the office action to file your response. However, you can only request one extension per office action.

What are the benefits and risks of the new deadline?

The new three-month deadline for responding to office actions has some benefits and risks for trademark applicants. Here are some of them:

Benefits:

  • It can speed up the registration process by reducing delays and backlogs

  • It can encourage applicants to prepare their applications more carefully and avoid common errors

  • It can help applicants save money by avoiding unnecessary extensions or late fees

  • It can improve communication and collaboration between applicants and examining attorneys

Risks:

  • It can create pressure and stress for applicants who have complex or multiple issues to resolve

  • It can limit applicants’ options and flexibility if they need more time or information to respond

  • It can increase the chances of missing deadlines or filing incomplete responses

  • It can result in abandonment or refusal of applications if applicants fail to respond timely or adequately

We hope this blog post has helped you understand the significance of the new three-month response time to office actions for trademarks. If you have any questions or need help with your trademark application, please contact us today for a consultation.