The US Patent and Trademark Office (USPTO) has issued new guidelines effective December 3, 2022, changing the previous six month office action response period to three months. An extension of an additional three months can be obtained upon request and submission of a $125 fee.

I. The New Guidelines

On November 17, 2022, the USPTO published a final rule creating a three month response deadline for Office Actions issued under Trademark Act Sections 1 and Sections 44. Effective December 3, 2022, the new rule will supersede the six month response deadline set forth in the Trademark Manual of Examining Procedure. This change only effects pre-registration non-final and final Office Actions, including Suspension Inquiries and Office Actions issued after filing a Statement of Use. The new response deadline does not apply to Office Actions issued against applications filed pursuant to the Madrid Protocol, Section 66(a).

An applicant may file a request for a three month extension. However, they must do so before filing any response. The USPTO must receive the request for an extension on or before the end of the three month response period. Only one extension request may be filed for each Office Action within a three month response period, and the total time for response must not extend beyond the six months from the Office Action issue date.

A request for extension must be filed through the Trademark Electronic Application System (TEAS) and include the following: (1) a written extension request from the applicant, filed before the expiration of the three month response period; and (2) payment of the fee required by 37 CFR §2.6(a)(28), currently $125 if filed via TEAS, and $225 if accompanying a permitted paper filing. Additionally, any submission for an extension request that is not accompanied by the applicable fee will be treated as a non-responsive communication, and given no effect.

If an applicant (1) fails to respond to an Office Action, or (2) fails to timely file a complete request for an extension of the time to respond, then the application will be deemed abandoned.

II. What This Means for Clients Going Forward

For Office Actions issued prior to December 3, 2022, the response period of six months remains unchanged. All Office Actions issued on or after December 23, 2022, will have a three month extendable response period. To avoid missing deadlines or incurring unnecessary extension fees and costs, it is essential to ensure that all trademark dockets are updated and that the information required to respond to Office Actions is promptly collected from business teams.

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