As part of the implementation of the Trademark Modernization Act (TMA) of 2020, the new USPTO rule (formerly 37 C.F.R. §2.62(a)) to respond to trademark office actions will drop from the former six-month period to three months, with the option to file an extension of time to respond for an additional, and final, three months. The effect of this new rule will bring the response period for trademark office actions in rough alignment with the response period for patent office actions, which have long been three-months (37 C.F.R. §1.134), with successive extensions of time up to a final six months (37 C.F.R. §1.136(a)).
The new response period will be applied against new office actions for pending applications issued on or after that date. For post-registration office actions, the three-month response deadline will take effect on October 7, 2023. To be clear, this new rule will apply only to pending applications with the following filing bases: use-based marks under §1(a), intent-to-use marks under §1(b), (15 U.S.C. 1051(a)-(b)), foreign intent-to-use marks under §44(d) (15 U.S.C. §1126(d) and 37 C.F.R. §2.34(a)(4)), and foreign use-based marks under §44(e) (15 U.S.C. §1126(e) and 37 C.F.R. §2.34(a)(3)). The new rule will not apply to pending Madrid Protocol applications under §66(a) (15 U.S.C. §1141(a)), of which the response time will remain a singular six-month period.
This new rule will go into effect on December 3, 2022 (2 days from now!). Please contact Yonaxis I.P. Law Group for questions on this new rule.