As part of the Trademark Modernization Act of 2020 (reported in the IP Intelligence Blog on Dec. 23, 2021), beginning on Dec. 3, trademark applicants will have three months (with a possible three-month extension) to respond to office actions issued during the examination of trademark applications at the United States Patent and Trademark Office (USPTO). The same change will go into effect next year (on Oct. 7, 2023) for post-registration office actions.

Since the passage of the Lanham Act in 1946, applicants have always had six months to file their response to office actions. However, perhaps because faster communications are now possible, it is the intention of the USPTO that shortening the time frame to three months will do the following:

• Decrease the time it takes to get and maintain a registration.
• Provide the flexibility to request additional time (for a fee) to respond to more complex office actions. The government filing fee to request an additional three months is $125 (electronic filing) or $225 (paper filing).

There has never been a requirement for trademark applicants to wait the full six months to file a response to an outstanding office action, nor will there be a requirement for applicants to wait three months to file. However, there may be strategic reasons for using all the available time to respond, whether it be three or six months.

If an applicant does choose to file for an additional three months, the request can only be made if the applicant has not already filed a response. The request must then be made on or before the three-month deadline. If the request is granted, the response must be filed on or within six months of the “issue date” of the office action.

The new response period applies to applications filed under most application filing bases, including those filed under Lanham Act Sections 1(a) (use-based), 1(b) (intent-to-use) and 44 (foreign). It does not apply, however, to applications filed under the Madrid Protocol (Section 66(a)). Those applications will continue to have a six-month response period.

Finally, an application will be abandoned if the response to the office action isn’t timely filed on or within either the three-month deadline or the later requested six-month deadline.

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