On November 17, 2021, the USPTO published a final rule amending its regulations to implement provisions of the Trademark Modernization Act of 2020 (TMA) to shorten the period for responses to office actions for applications under Sections 1 and/or 44 and responses to post-registration office actions to three months (from six months), with both changes to be effective December 1, 2022. The new regulations also provided for a three-month extension of time upon payment of a fee.
In a final rule issued October 13, 2022, the USPTO has delayed the effective dates of these changes. The change to three months for responses to office actions will now go into effect on December 3, 2022 – a two-day delay. The change in the response period for examination of post-registration filings will now go into effect on October 7, 2023 – an approximate ten-month delay.
Under the newly amended, the following rules apply for responses to office actions, effective December 3, 2022:
- Responses to office actions for applications under Section 1 and/or 44 shall be due within three (3) months from the issue date
- A three-month extension of time for filing a response to an office action for applications under Section 1 and/or 44 can be requested for payment of a fee. The fee for a paper filing is $225.00. The fee for an electronic filing via TEAS is $125.00.
- No additional extensions can be requested.
Under the new regime, the following rules apply for responses to post-registration office actions, effective October 7, 2023:
- Responses to post-registration maintenance or renewal office actions shall be due within three (3) months from the issue date
- A three-month extension of time for filing a response to a post-registration maintenance or renewal office action can be requested for payment of a fee. The fee for a paper filing is $225.00. The fee for an electronic filing via TEAS is $125.00.
- No additional extensions can be requested.
For applications under Section 66(a), there is no change to the response period for office actions, which remains at six months.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.