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December 2, 2022

Stroock Client Alert

By: Alesha M. Dominique, Caen A. Dennis

Beginning December 3, 2022, United States Patent and Trademark Office (“USPTO”) trademark applicants and registrants will have three (3) months to respond to office actions, rather than six (6) months, with the possibility of a three-month extension for a fee of $125. The shortened response period permits the USPTO to decrease the time it takes to grant and maintain a trademark registration, while providing applicants and registrants with flexibility to request additional time to respond. The change applies to office actions issued on or after December 3 only.

Since the effective date is a Saturday, if there is any issue with the USPTO’s IT systems that prevents applicants from being able to file their response with the USPTO, such applicants will have until Monday, December 5, 2022 to file their timely response.

The new response period applies to most application filing bases, including § 1(a) use in commerce applications, § 1(b) intent to use applications, and §§ 44(d)-(e) foreign applications. The new response period does not apply to § 66(a) Madrid Protocol applications.

If an applicant misses the response deadline and does not request a three-month extension of time to respond prior to the original three-month deadline, their application will be abandoned. This means that the USPTO will no longer process the application, the application cannot mature into a registration, and the applicant must either: (1) file a Petition to Revive no later than two months after the issue date of their Notice of Abandonment; or (2) start the application process over again.

December 2, 2022

Stroock Client Alert

By: Alesha M. Dominique, Caen A. Dennis

Beginning December 3, 2022, United States Patent and Trademark Office (“USPTO”) trademark applicants and registrants will have three (3) months to respond to office actions, rather than six (6) months, with the possibility of a three-month extension for a fee of $125. The shortened response period permits the USPTO to decrease the time it takes to grant and maintain a trademark registration, while providing applicants and registrants with flexibility to request additional time to respond. The change applies to office actions issued on or after December 3 only.

Since the effective date is a Saturday, if there is any issue with the USPTO’s IT systems that prevents applicants from being able to file their response with the USPTO, such applicants will have until Monday, December 5, 2022 to file their timely response.

The new response period applies to most application filing bases, including § 1(a) use in commerce applications, § 1(b) intent to use applications, and §§ 44(d)-(e) foreign applications. The new response period does not apply to § 66(a) Madrid Protocol applications.

If an applicant misses the response deadline and does not request a three-month extension of time to respond prior to the original three-month deadline, their application will be abandoned. This means that the USPTO will no longer process the application, the application cannot mature into a registration, and the applicant must either: (1) file a Petition to Revive no later than two months after the issue date of their Notice of Abandonment; or (2) start the application process over again.