On December 3, 2022, the US Patent and Trademark Office (USPTO) is making a big change to the requirements to respond to rejections or requirements for further information.
Background: When a business files an application for trademark registration in the US, it is (eventually) examined, and the examining attorney will either approve the application or issue an Office Action. The Office Action is a letter that will either refuse to accept the application (because of a prior similar registration or other ground for refusal) or require amendments to a part of the application (such as the description of goods) before the application can be accepted. Throughout recorded history, the USPTO has given the applicant six months to respond to the Office Action.
Big Change: For Office Actions issued on or after December 3, the USPTO will require a response within three months of the date of issue of the Office Action. It is possible to extend this time for an additional three months with payment of a fee. The fee will need to be paid before the 3-month deadline; it will not be automatic and cannot be paid after the fact.
What this means for applicants: Your attorney handling the application will notify you when an Office Action issues and will let you know the deadline to respond or request the extension. It will be important to review the issues with your attorney and make a plan for responding without delay.
Additional considerations: For now, this change only applies to Office Actions issued in pending applications. For Office Actions that might issue in response to a post-registration renewal or declaration of use, the same change will take effect on October 7, 2023.
For more information about this rule change or any issues related to trademark protection or registration, please contact Laura Winston.
ABOUT LAURA WINSTON
Laura J. Winston is a principal in the firm’s Intellectual Property group. Ms. Winston focuses her law practice primarily in the areas of trademarks, copyrights and the internet, representing a broad range of clients from individual business owners and small startup ventures to established Fortune 500 and publicly-traded companies both domestically and abroad. Ms. Winston practiced both at large firms and specialized intellectual property firms, before co-founding an intellectual property boutique firm. Her industry experience covers various industries as diverse as pharmaceuticals and medical devices, print and online publishing, computer-related goods and services, alternative energy, and travel and transportation.
ABOUT OFFIT KURMAN
Offit Kurman, one of the fastest-growing, full-service law firms in the United States, serves dynamic businesses, individuals and families. With 18 offices and more than 250 lawyers who counsel clients across more than 30 areas of practice, Offit Kurman helps maximize and protect business value and personal wealth by providing innovative and entrepreneurial counsel that focuses on clients’ business objectives, interests and goals. The firm is distinguished by the quality, breadth and global reach of its legal services and a unique operational structure that encourages a culture of collaboration. For more information, visit www.offitkurman.com.
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