Westchester Women's Bar Association

New Response Period for Trademark Office Actions

Due to a surge of trademark filings at the United States Patent & Trademark Office (USPTO), the processing time for applications has been significantly delayed. The Trademark Modernization Act of 2020 is addressing this issue by changing the response time for replying to Office Actions. See our web page entitled Office Actions, for a basic understanding of these written actions taken by the Examining Attorney assigned to your trademark application at the USPTO. The new response period is three months (modified from six months) and will apply to applications filed under Trademark Act sections 1 and/or 44. See 37 C.F.R. §2.62(a)(1)(i).

The rule change went into effect on December 3, 2022. Response periods for trademark applications filed under section 66(a) remain unchanged. Those applications maintain a six-month response period. Each Office Action must set forth the deadline for responding and therefore no confusion should result. See 37 C.F.R. §2.62(a).

The three-month period applies only to pre-registration Office Actions at this time. This includes inquiries about suspension and Office Actions issued after filing a Statement of Use. The deadline for filing a Notice of Appeal is also three months from the issue date of a final Office Action. For example, if a final Office Action was issued on February 6, 2023, and the applicant filed a request for reconsideration on May 6, 2023, but did not file an extension request prior to filing the request for reconsideration, the time for filing an appeal is May 6, 2023. Regarding post-registration Office Actions and the applicable response periods, these will be effective on October 7, 2023.

The three-month deadline to respond to an Office Action may be extended once by filing a request subject to an applicable filing fee, currently $125. Then, the applicant would have an additional 3 months to respond to the Office Action. If the Office Action is not responded to within the three-month period or if the response to the Office Action is incomplete, the application will be abandoned. An applicant can seek to revive an abandoned application by filing a petition to revive under 37 C.F.R. §2.66. For a basic understanding of this topic, see our web page entitled, Is It Possible to Revive an Abandoned Trademark Application?

If a petition to revive is filed with the USPTO, it must contain a statement signed by someone with first-hand knowledge of the facts stating that the delay in filing the response to the Office Action was unintentional. In addition, there would be either one or two filing fees required as well. A fee for filing a petition to revive would be required. In addition, possibly an Extension Request fee would also apply if the applicant does not assert non-receipt of the Office Action or notification. If the application was abandoned after a final action, and the applicant does not state non-receipt of the final action, then additional rules apply. See 37 C.F.R. §2.141, 37 C.F.R. §2.146, and 37 C.F.R. §2.66(b)(5).

Another possible scenario for petitions to revive would include the circumstance wherein the application was abandoned because the applicant did not file a response to a non-final action with an extended response period. Under this circumstance, a filing fee is required for filing a petition to revive, a statement is necessary declaring the delay in filing was unintentional, and lastly a signed response to the Office Action would also need to be included with the petition to revive. If under this scenario, the application was abandoned after a final action, in addition to the above requirements, the applicant must also either file a notice of appeal to the Board or a petition to the director, or a statement that no appeal or petition is being filed from any final refusal or requirement.

On December 3, 2022, Examination Guide 2-22 entitled, Change in Office Action Response Periods for Section 1 and/or Section 44 Applications, superseded the current edition of the Trademark Manual of Examining Procedure (TMEP) to the extent of any inconsistencies. If you have questions pertaining to the new response periods for Office Actions, please contact the firm for a courtesy consultation.

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