PTO Response Deadline Changes & Your Registration
Filing an application to register a federal trademark with the U.S Patent & Trademark Office (USPTO) can be challenging. Part of this challenge is the ongoing application monitoring required, as well as responding to an Examining Attorney’s questions or objections to your application…
The requirement timeline for Examiner responses will become much shorter as of December 1, 2022.
The USPTO is decreasing the time permitted for filing trademark application responses to objections and inquiries to 3 months, or else the applicant is required to pay a $125 fee per application for an additional 3-month response window.
What this means for mark holders
Once your initial application is submitted, your typical wait time before the Examining Attorney determines whether the application will be allowed to continue in the registration process is 9-11 months. If an Examiner has questions, or determines that an application should not register, an Office Action is issued. You or your filing attorney must respond to that Office Action or you can lose your application.
In the past, applicants have generally been allowed 6 months to respond. With this new requirement, you will now have only 90 days to respond to the Office Action.
With less time available, you have no time to lose in preparing and filing your response to an Office Action. Failure to respond within the allotted time will result in abandonment of the application, meaning that you could jeopardize your claim to your mark.
While 90 days to respond may seem like a long time in the business world, in the life of a trademark application, this is a very short window. Office Action responses require research, and often a written brief or other documentation to provide the Examiner with the information needed to approve the application. Collecting this data can be tedious and time-consuming, and any delay by you (the applicant), your attorney or others involved in the application process can mean a missed deadline.
What this means for attorneys
Attorneys practicing Intellectual Property Law should not be surprised by this recent change. The Trademark Modernization Act amended TMA section 1062(d) to allow the USPTO to set flexible Office Action response periods. This is not the first institution of this act, and likely will not be the last.
Attorneys working in Trademark law should be monitoring all applications carefully and responding as quickly as possible to any Office Actions that are sent from the USPTO examiners. Make sure that you have solid tracking systems in place, and that your firm is poised to handle Office Actions that are more complex in nature by allowing adequate time for investigation and response.
For attorneys whose primary practice is not Intellectual Property or Trademark Law, it’s vital that you stay on top of Office Actions weekly. Should any denials from Examining Attorneys require a deep dive into IP law, you may need to bring in expert help to secure the approval of the application for your client. We work collaboratively with many firms to provide this service and have found that non-IP firms who are attentive to Office Actions as they come in have greater success than those who work up against USPTO deadlines.
If you receive an Office Action from the USPTO, don’t lose your application! Pay attention to the new deadline, and contact an experienced trademark attorney to help you navigate any inquiry or objection from the Examining Attorney.