For office actions issued on or after December 3, 2022, by the United States Patent and Trademark Office (USPTO) during the examination of a trademark application, an applicant will have three months to file a response instead of the current six-month period but will have an option to file a single request for a three-month extension to the response deadline upon payment of a $125 fee. (The $125 fee applies only to an extension request filed online via the USPTO’s TEAS system. A $225 fee is required for any extension request filed on paper.) If no response or extension request is timely filed under these circumstances, the application will be abandoned.
This response period change will not apply to Madrid Protocol applications seeking an extension of protection to the United States under Section 66(a) of the Trademark Act. The response period for office actions issued against Madrid Protocol applications will remain at six months.
Further, this response period change will not apply to post-registration office actions until October 7, 2023. Trademark registrants will continue to have six months to respond to post-registration office actions issued before October 7, 2023.
Note that when the deadline for a response to an office action falls on a Saturday, Sunday or U.S. federal holiday, the response is considered timely if the action is received, or the fee is paid, on the following day that is not a Saturday, Sunday or U.S. federal holiday.
If an application is abandoned for failure to timely file a response or extension request, the applicant may be able to revive the application upon the filing of a petition and the applicable fees.
The trademark attorneys at Fredrikson & Byron are here to help brand owners and their representatives navigate these changes and answer any questions. For additional information, you may also visit the USPTO site.
