U.S. Trademark Applications Hit the Fast Track – At Least in Theory

2 min

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

The rule was enacted to decrease 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 with complex or substantive issues (under current practice the USPTO does not provide a formal mechanism for requesting an extension of time to respond).

With this change applicants can presumably expect a shorter examination process and for applications to reach registration more quickly, although the USPTO has not indicated how it will achieve this goal, given the significant current delay in examination. If it is able to achieve it, however, this can be useful for online brand enforcement and takedown requests, where host platforms require submission of a certificate of registration prior to acting on a request. This change also aligns the USPTO with other trademark offices in key international jurisdictions like the EU and UK, where trademark prosecution tends to move at a quicker pace.