As of now, the answer to that is six months from the date of mailing of the Office Action from the USPTO. However, that is going to change in the near future.
With effect from 3rd December 2022, the USPTO has reduced the time provided to respond to Trademark office actions from 6 months to 3 months. The rule was initially slated to take effect on Dec. 1, but the USPTO noted that the two extra days would allow the agency to install the required Information Technology updates.
The reduced timeline will not have a retrospective effect. It will affect the office actions mailed on or after 3rd December 2022. The USPTO stated that office actions are generally filed within 3 months of issuance, so the reduced time will ensure greater efficiency and reduce the time spent on the prosecution.
What Are Office Actions?
Office actions are official letters sent by the USPTO. In it, an examining attorney lists any legal problems with your chosen trademark, and the application itself. One must resolve such legal issues before the registration of a trademark.
The new system that is to be implemented takes into account the possibility of needing more time for the response. If additional time is required then the applicant is entitled to request a single extension of 3 months by paying a $125 USPTO fee.
What Are the Differences in Implementation for Different Office Actions?
This reduced timeline starting from December 3, 2022 will be effective for pre-registration office actions. Pre-registration office actions mean the official letter sent by the examining attorney raising legal objections if any with respect to the applicant’s trademark. These legal problems need to be addressed and sent back to the USPTO. The time period for answering such office actions has now been reduced from 6 months to 3 months.
In respect of the post-registration office actions, this change from 6 months to 3 months will not happen until 7 October 2023. Post-registration office actions explain the reasons why the USPTO cannot accept or acknowledge your trademark registration renewal or maintenance document.
This change will not affect the time period to respond to the applications filed under the Madrid system. The timing for these applications will remain at 6 months. The Madrid protocol enables a trademark applicant to receive trademark protection in multiple countries by filing a single application and paying one set of fees.
What is the Rationale Behind this Change?
Essentially, these changes have been made to streamline trademark applications. The reduced time period will force the Trademark examiners to examine the applications at a much faster pace. The attorneys would also need to file the responses quicker, reducing the initial costs incurred.
The USPTO is very much in a middle ground when it comes to the time given for Office Action responses. Some nations, such as New Zealand, allows one year for the response to the Office Action. In contrast, nations like China and India only allow a period of 15 days to one month (depending on circumstances) to file the response.
It will be interesting to see whether the reduced time frame enables applications to be examined and published faster, both reducing the backlog at the Trademark office and allowing applicants to get their rights granted faster.
Author: Dipanwita Chakraborty, Legal Trainee at PA Legal.
In case of any queries, kindly contact us here.
Thank you for reading our blog! We’d love to hear from you! 🙂
- Are you Interested in IP facts?
- Would you like to know more about how IP affects everyday lives?
- Have any questions or topics you’d like us to cover?
