USPTO halves Trademark Office action response time
US trademark applicants will have to be a bit quicker: Effective December 3, 2022, the time for applicants to respond to many Office actions will be cut in half – from six months to three.
The USPTO’s final rulemaking implements a provision of the Trademark Modernization Act of 2020. But – there’s always a “but” – the USPTO will allow applicants to file an extension before the three-month deadline. The extension requires a $125 fee and provides three additional months to respond.
The new rule affects Section 1 and 44 applications, which are used-based applications, intent-to-use applications, and applications filed based on a foreign pending application or registration under the Paris Convention. Applications under the Madrid Protocol will remain unchanged, and the response time for those Office Actions will remain at six months.
Post-registration Office action timelines will remain the same for now. But, starting October 7, 2023, the USPTO will make the same changes to post-registration actions as well – cutting the response time in half and allowing one fee-dependent extension.
A knee-jerk reaction may be “who cares?” Here are reasons to care. First, the new rulemaking will, it is hoped, make the application process faster and force trademark attorneys to keep a watchful eye on deadlines. But the rule also has some important consequences for filers, especially in certain circumstances, like:
- The 2(d) refusal countdown. When a trademark application is refused under Section 2(d) – which is a likelihood of confusion with a third-party filing – the first thing an attorney often checks is the renewal date for the blocking reference. If you’re lucky, the renewal date is coming up soon and the blocking mark doesn’t appear to be in use. Under the old timeline, applicants could get more than a year’s worth of time in drawing out responses to see if a blocking reference fails to be renewed. Now, the blocking registration’s renewal must be imminent or already in the grace period. A not-so-bold prediction: the new timelines will cause more cancellation actions and expungements and more back-up applications.
- The supplemental countdown. When a trademark is refused under Section 2(e) – which means it is merely descriptive of the goods or services offered thereunder – an applicant often has the option of amending its application to the Supplemental Register. The Supplemental Register does not have all the statutory benefits of the Principal Register, but is a good option for those building rights in arguably descriptive marks. A mark cannot register on the Supplemental Register, however, if it is an intent-to use application and a statement of use is not filed and accepted. For intent-to use applications refused under Section 2(e), applicants used to be able to buy more than a year’s worth of time to implement use of their mark and provide proof of use to the USPTO. That timeline, however, is now cut in half. Combine that fact with the fact that the USPTO is generally examining specimens closely and cracking down on “mock up” specimens, suggests Examiners may be taking a harder look at statements of use.
- Speed up your protest. Protest letters are useful means to notify an Examining Attorney that a third-party application potentially infringes on your rights. The timing for filing these letters, however, is often important. Letters filed before publication only need to include evidence relevant to the refusal. Letters filed after publication, however, must establish a prima facie case for refusing registration – a higher standard. The USPTO’s new timelines are likely to speed up the time to publication, forcing parties looking to file letters of protest to get letters in early.
- Deadline ballet. New deadlines will force filers – especially trademark attorneys – to be extremely careful. Calculating Office action deadlines used to be very easy – everything was due in six months. Attorneys, docketing staff, and docketing software managers must now carefully delineate between Madrid Protocol applications (which maintain a six-month deadline) and the rest of the applications (with a three-month deadline).
- Petitions to revive. A final bold prediction: petitions to revive will increase this year. This could put an added strain on the Petitions Office, although this is one the USPTO is expecting.
Find out more about the implications of the new deadlines by contacting the authors or your usual DLA Piper relationship attorney.