The United States Patent and Trademark Office has established a new deadline period for responding to Office Actions issued on or after December 3, 2022. The current deadline of six (6) months will be shortened to three (3) months with an option to extend an additional three (3) months.  This change is a result of implementing the Trademark Modernization Act of 2020[1].

The US Trademark Office intends for the change to speed up the examination process and therefore decrease the time it takes to get a federal trademark registration, while also allowing applicants the flexibility to request additional time to respond to more substantive Office Actions.

What can you do to prepare for the shortened deadline change?  Because there is a shorter time period for responding to an Office Action, it is important to keep in mind the following:

• Conduct a trademark search prior to filing a federal trademark application. A trademark search will make you aware of possible substantive issues, such as potentially conflicting marks that may result in a likelihood of confusion rejection, that will need to be addressed in an Office Action. 
   
• Prepare and file a complete trademark application at the initial filing stage. Be sure that you have accurate information about the mark, owner, and whether the mark is in use. For example, submitting proper specimens showing trademark use in the initial filing will help prevent having to respond to a more complex Office Action requiring new specimens or amending the application filing basis. Retrieving new specimens can often be time consuming and potentially problematic with the new stringent deadline requirements.
   
• If you require the extension period to file a response, a Request for Extension of Time to File a Response form and $125 fee must be filed *prior* to the expiration of the initial three-month deadline in the Office Action. Also, the extension request can only be filed if a response has not yet been filed. If you know that you will need to use the additional three months to respond to the Office Action, you must plan ahead and prepare to file the extension request prior to the initial deadline.
   
• If neither a response nor an extension request is filed within three months from the Office Action, the trademark application will be deemed abandoned. You will need to file a Petition to Revive for the trademark application to continue in the examination process.

The new response deadline will be implemented only for Office Actions issued on or after December 3, 2022 during the pre-registration examination process. Post-registration Office Actions will transition to the new response deadline scheme on October 7, 2023. Also, Office Actions issued in Madrid Protocol section 66(a) applications will continue to have the six-month response deadline.

It currently takes about 6-12 months before we hear anything from the Trademark Office after filing a trademark application. This time lag puts a strain on new businesses that are preparing to launch a new name or brand for their products and/or services. Intellectual Property practitioners are hopeful that this new rule will help decrease the application examination backlog at the Trademark Office and get swifter feedback and application approvals.