As of December 3, 2022, trademark applicants have three months (with an optional three-month extension) to respond to office actions issued during the examination of a trademark application at the United States Patent and Trademark Office (USPTO). This change only applies to office actions issued on or after December 3.
By shortening the response time, the USPTO intends to decrease the time it takes to get a registration. The option to file an extension request provides flexibility for customers that need more time to respond to more complex office actions.
The deadline for responding to office actions for Madrid Protocol section 66(a) applications will remain at six months, given the additional processing time these applications take.
The new response period will not apply to post-registration office actions until spring or early summer 2024.
Application filing bases subject to the deadline
The new response period applies to most application filing bases.
|Does not apply to
|Use in commerce section 1(a)
|Madrid Protocol section 66(a)
|Intent to use section 1(b)
|Foreign application section 44(e)
|Foreign application section 44(d)
Office actions affected by the new deadline
The new deadline applies to office actions that meet all of the following conditions:
- Issued on or after December 3, 2022
- Issued by the law offices
- Issued before registration in applications based on sections 1 or 44
- Requires a response
- Specifies that the response period is three months
The new deadline does not apply to office actions that meet any of the following conditions:
- Issued before December 3, 2022
- Issued after registration
- Issued by a work unit other than the law offices, such as the Intent-to-Use Unit or the Examination and Support Workload and Production Unit
- Doesn’t require a response (such as examiner’s amendments)
- Doesn’t specify that the response period is three months (such as denials of requests for reconsideration, 30-day letters/notices of incomplete response, and actions continuing a final)
Response to all issues required by the deadline
You must file your response to an office action on or before the deadline. You can calculate the three-month deadline from the “issue date” in that action.
When responding to office actions, make sure you’re providing a complete response that addresses all outstanding issues in the office action.
Need more time to respond?
We understand some application issues are more complex, and you may require additional time to respond. Therefore, you can request one three-month extension for a $125 fee.
You must file the request for an extension before you file your response. Once the extension request is granted, we must receive your response within six months of the “issue date” in the office action. If you’re filing an appeal to a final office action, either instead of or in addition to your response, and your extension request was granted, it must also be filed within six months of the issue date in the office action.
To file a request:
- Use the Request for Extension of Time to File a Response form and pay the $125 fee
- File it within three months from the issue date in your office action
- File it before you file your response or appeal
If you use any form other than the Request for Extension of Time to File a Response form, your request will not be processed.
You can’t request an extension of time to respond to an office action:
- Issued for a Madrid Protocol section 66(a) application
- Issued before December 3, 2022
- If the new deadline does not apply to the office action
What happens if the response deadline isn’t met?
Your application will be abandoned if you don’t respond to your office action or request an extension on or before the three-month deadline. Also, your 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 six-month deadline. If your application is abandoned, it will not move forward or be processed by the USPTO, and your filing fee will not be refunded.
Partial abandonment procedures remain unchanged. If the office action was limited to particular goods, services, or classes, the application will abandon only as to those particular goods, services, or classes.
Under certain circumstances, you may be able to revive your application by filing a petition and paying a 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.
If you don’t file a petition, your only option is to start the application process over again.