Introduction:
The Trademark Modernization Act of 2020
Recent changes to United States trademark laws herald significant changes for brand owners. In particular, the Trademark Modernization Act of 2020 (TMA) established new rules for trademark enforcement, prosecution, and maintenance. The TMA adjusted United States Patent and Trademark Office (USPTO) procedures, implementing expedited trademark application timelines and creating new enforcement tools for brand owners.
Among its many prominent impacts, the TMA created new expungement, cancellation and re-examination procedures, to help clear away unused registered trademarks from the federal trademark register. The TMA also streamlined the process for third parties to challenge trademark applications via Letters of Protest. And, notably, the law created new deadlines in order to expedite the trademark application process.
Implementation of the TMA represented one of the most prominent trademark law developments of the past year. In December 2022, a key component of the TMA came into effect, establishing a new deadline for “office action” responses that all trademark applicants should keep in mind.
What are USPTO “Office Actions”?
Office actions represent one of the most challenging aspects of the USPTO trademark application process. Approximately six months after filing, the USPTO assigns an examining attorney to each trademark application. If the examining attorney identifies any legal problems with the chosen trademark, or with the application itself, an official letter, otherwise known as an “office action” is sent to the applicant.
An office action might require that the applicant fix legal problems with the application itself (“requirements”) by making simple revisions, such as clarifying goods or services. The office action could also raise legal rejections (“refusals”), such as a concern that a chosen trademark is likely to be confused with an already registered trademark.
For a trademark application to proceed toward registration, the applicant must first resolve all issues identified in the office action within a strictly-enforced timeframe. This often requires submitting complex legal arguments to the USPTO. If an applicant provides no response or fails to respond before the response deadline, the trademark application will become abandoned.
The TMA Shortened Office Action Response Timelines
Before implementation of the TMA, trademark applicants had six months to respond to office actions as a matter of course, which could result in a years-long path to registration in some instances. In order to speed up the trademark registration process, the TMA provided the USPTO with flexibility to shorten office action response times. Seizing this opportunity, the USPTO cut the standard office action response time in half.
The New Deadline for Responding to USPTO Office Actions
The USPTO recently published an article announcing this change, stating that “[b]eginning December 3, 2022, trademark applicants will have three months (with an optional three-month extension), instead of the current six months, to respond to office actions issued during the examination of a trademark application. This change only applies to office actions issued on or after December 3.”
Extensions for Office Action Response
Applicants can request a single three-month extension of time to respond for a fee of $125. The shorter response times are likely to expedite the registration timeline, which may prove useful to applicants seeking to establish nationwide brands or enforce their rights against infringers.
Conclusion:
New USPTO Office Action Deadline Provides Increased Efficiency But Requires a More Proactive Approach
The historically drawn-out timeline for USPTO trademark applications, often taking over a year from submission to registration, represented a particular point of frustration for many trademark owners. In a refreshing turn of events, the USPTO specifically acknowledged that it implemented the new office action deadline to decrease the time it takes to secure a registration. Not only that, the new rule also provides trademark applicants with increased flexibility via the optional extension. Businesses in the process of building new brands should view this as an opportunity to secure important intellectual property assets more quickly than had been the case. And companies with pending trademark applications should take note that the new shortened office action response timeline requires a more proactive approach to the trademark application process. Trademark applicants that miss this new deadline risk losing their applications to abandonment, which could weaken or even forfeit hard-earned trademark rights.
The intellectual property attorneys at Rogoway Law Group have significant experience responding to USPTO office actions and guiding trademark applications through the process, to successful registration. Please contact us today for a complimentary consultation to discuss how we can help safeguard your brand and intellectual property.
