Starting on December 3, 2022, trademark applicants will now have three months to respond to an office action, with the option for a three-month extension. This deadline replaces the prior six-month time frame to respond to an office action — and only applies to those issued on or after December 3 of last year. The new policy stems from the Trademark Modernization Act of 2020 and is meant to shorten the deadline to decrease the overall amount of time the lengthy registration process takes. It’s crucial to keep the updated time frame in mind when responding to an office action.
An office action is a formal letter issued by the USPTO to a trademark applicant that specifies any legal issues with your mark or the application. Office actions are a standard part of the trademark application process and while they can be an obstacle, they are not the same as a denial. Rather, when an office action is issued, a trademark applicant may cure the deficiency in order to ensure their trademark will be successfully registered.
Office actions can either be nonfinal or final. When an office action is nonfinal, the USPTO gives you the opportunity to respond to the issue for the first time. In contrast, a final office action gives you one last chance to make the necessary corrections to your application. An office action response can be time-consuming and typically contain highly detailed arguments.
When filing a trademark application, at least one filing basis must be specified. Failure to do so can result in you being required to amend your application. The new three-month deadline applies to most application filing bases, including the following:
The new three-month time frame does not apply to Madrid Protocol trademark applications. In addition, the response period will not be implemented for any post-registration office actions until October 7, 2023.
Responding to an office action is often a laborious and complicated endeavor. Specifically, there is no uniform response — how you respond to a trademark office action will depend upon the problems that are identified in it. Trademark office actions may be issued by the USPTO for both substantive and administrative reasons. The response to an office action must address each ground of rejection and any objection the examiner raised.
For example, administrative issues can involve things like a problem with the description of the goods or services, or an issue with the specimen provided. An examining attorney might also request additional information regarding the meaning of the mark in an industry to determine whether the mark is descriptive or used as a common term within that industry. Substantive issues include problems such as likelihood of confusion, similarity between two marks, and mere descriptiveness.
In complex cases, the option to file a request for an extension of time gives trademark applicants the flexibility they might need to respond to an office action. One three-month extension is permitted for a fee of $125. But it’s important to understand that the extension request must be filed within three months from the issue date in the office action — before a response or appeal is submitted. After the USPTO grants the extension request, it must receive the response within six months of the issue date specified in the office action.
Failure to respond to an office action by the applicable deadline will result in your trademark application being deemed abandoned. Additionally, a trademark application will also be considered abandoned if you are granted an extension request but do not file a response within the six-month time frame. However, you may be able to revive an abandoned application by filing a petition with the USPTO and paying a fee. Otherwise, you will be required to begin the trademark registration process from the beginning.
The best way to avoid an office action is to ensure your application is thorough from the very beginning. Nevertheless, they are routinely issued by the USPTO and it’s essential to have a knowledgeable trademark attorney who can guide you through the process of responding to an office action. Located in Ann Arbor, Michigan, the Trademark Lawyer Law Firm, PLLC provides trademark services for business owners, startup companies, and entrepreneurs in many different industries throughout the country. With an impressive track record of successfully registering more than 6,500 trademarks, we provide our clients with exceptional legal services at reasonable rates. Contact us today to schedule a complimentary 15-minute consultation with a trademark attorney concerning your trademark matter.
Suspensions are when your application is on hold. There are various reasons a trademark application can be suspended. However “likelihood of confusion” with prior application(s) filed and submission of foreign application are the most common reasons the USPTO may suspend an application. During a trademark suspension period, your lawyer will provide guidance on the next steps and whether it might be best to file an argument or pursue a coexistence agreement.
A disclaimer usually refers to a statement which indicates that you are not claiming exclusive rights to use the word(s) or a design element in your trademark application. A disclaimer allows for registration without creating a false impression of the registrant’s rights.
A good example of this is disclaiming “café” if your services are for a café.
If a trademark is not eligible for the Principal Registry, there is sometimes an option to register on the Supplemental Registry.
In cases where the USPTO finds the trademark application is merely ornamental, merely descriptive, or primarily geographically descriptive, the USPTO may allow the application to be registered on the Supplemental Registry. However, over time, the mark may acquire distinctiveness and possibly become eligible for the Principal Registry.
Two dates must be specified in a trademark application:
Date of First Use Anywhere: The “anywhere” refers to use in the U.S. or elsewhere. This is the date the goods were first sold or transported, or the services were first rendered under the mark. The use must also have been bona fide and in the ordinary course of trade.
Date of First Use in Commerce: This is the date when the goods were first sold or transported, or the services were first rendered under the mark in interstate or international commerce. The use of the mark must have been bona fide and in the ordinary course of trade.
The renewal timeframe for a trademark is between the 9th and 10th year anniversary of the trademark registration, and then in ten-year intervals. It is important to be aware that the USPTO also requires a registrant to provide an affidavit at the 5th and 6th years of ownership stating that the trademark is still being used in commerce. Failure to comply with the renewal timeframes or the affidavit requirements will result in the cancellation of the trademark registration.