Beginning December 3, 2022, United States Patent & Trademark Office (USPTO) trademark applicants will have only three (3) months (instead of six (6) months) to respond to office actions issued during the examination of a trademark application. Applicant’s may request one three-month extension per office action for an additional $125 filing fee. The option to file an extension request provides flexibility for customers that need more time to respond to more complex office actions.
This change only applies to USPTO office actions issued on or after December 3, 2022. The USPTO’s goal in shorting a trademark applicant’s time to respond to an office action, is to help decrease the time it takes to complete the trademark registration process – which, as of October 2022, is averaging around 14-15 months.
The deadline for responding to office actions for Madrid Protocol section 66(a) trademark applications will remain at six months, given the additional processing time these applications take.
The new response period will not apply to post-registration USPTO office actions until October 7, 2023.
You Must Respond Before The 3 Month Deadline
As with previous office actions, you must respond before the three (3) month deadline or your trademark application will automatically move to “abandoned” status. If your trademark is abandoned, you may be required to start the entire application process from the beginning, you will lose your filing fees, and you may also lose your priority filing date. The three month deadline is calculated from the date the USPTO issued you the office action.
What Happens If You Miss The 3 Month Deadline?
Your trademark application will automatically be abandoned if you don’t respond to your office action or request an extension on or before the three (3) month deadline. Also, your trademark application will be abandoned if you file an extension request and it is granted, but you then don’t file a response on or before the new three (3) month deadline (or six (6) months from the date the USPTO issued you the office action). If your trademark application is abandoned, it will not move forward or be processed by the USPTO, and your filing fee will not be refunded.
Under certain circumstances, the USPTO may allow you to revive your trademark application by filing a written petition and paying a filing fee. If you were granted an extension, but your application was abandoned because you didn’t file your response within six months, you can’t claim non-receipt of the office action in your petition to revive the application.
A Petition to Revive A Trademark Application
A petition to revive a trademark application with the USPTO is a request to the USPTO to bring an abandoned application back to life. This can happen when an applicant fails to respond to an office action or other correspondence from the USPTO within the required time frame and the application is deemed abandoned.
A petition to revive must be filed within two (2) months of the abandonment date, and it must include a statement explaining why the failure to respond occurred and an explanation that the trademark is still in use in commerce or that the applicant has a bona fide intention to use the trademark in commerce.
It’s important to keep in mind that not all petitions to revive will be granted, and the USPTO has discretion to deny the petition if it finds that the failure to respond was due to the applicant’s lack of diligence, or if it determines that the trademark is no longer in use or that the applicant does not have a bona fide intention to use the trademark.
It’s recommended to consult with one of our trademark attorneys to ensure you understand the requirements and to prepare a strong petition that will increase the chances of success. If you don’t file a petition, your only option is to start the application process over again.