US Trademark Filings Are Following the Fast Lane – At Least in Theory | Venable LLP

The United States Patent and Trademark Office (USPTO) recently enacted a rule change that will affect all trademark applications filed domestically in the United States (rather than through the Protocol). of Madrid). From 3 December 2022, trademark applicants will now have three months (instead of the current six months) to respond to an Office action. A single three-month time extension to respond to each office action is available upon payment of the government filing fee of $125 (for electronic filing) and $225 (for paper filing). This same change will come into effect for post-registration administrative actions on October 7, 2023. The response time for administrative actions issued under Madrid Protocol applications has not changed and remains at six months. .

The rule was enacted to reduce the time it takes for applications to reach registration and the time it takes to maintain or renew a registration. The new three-month extension request is intended to provide applicants with flexibility by allowing them to request additional time to respond to Office actions on complex or substantive issues (under current practice, the USPTO does not provide no formal mechanism to request an extension of time to respond).

With this change, applicants can presumably expect a shorter review process and applications to reach registration more quickly, although the USPTO has not indicated how it will achieve this, counting. given the current significant backlog in the review. If it is able to achieve this, however, it can be useful for online trademark enforcement and takedown requests, where host platforms require the submission of a registration certificate before respond to a request. This change also aligns the USPTO with other trademark offices in key international jurisdictions such as the EU and the UK, where trademark litigation tends to move at a faster pace.

Sharon D. Cole