In the wake of the Trademark Modernization Act of 2020 (“TMA”), the United States Patent and Trademark Office (“USPTO”) promulgated a new, shorter period for responding to Office Actions on trademark applications. The change flows directly from the USPTO’s amendment of federal regulations to provide flexibility in setting deadlines, including the option to allow for extensions.
Starting on December 3, 2022, trademark applicants will have only three (3) months to address Office Actions as opposed to the six (6) months presently allotted. A single three (3) month extension may be requested for a fee of $125.00 if filed electronically or $225.00 if the request is filed on paper. Notably, foreign applicants filing under the Madrid Protocol, a major trademark treaty, are excluded from the rule and will continue to enjoy the full six (6) month response period without the need to file an extension.
According to the USPTO, the shortened deadlines are intended to increase efficiency in response to an exponential increase in the number of trademark applications filed recently, described as “unprecedented” and a “huge surge.” The raw data indicates a 172% increase in the number of applications filed between December 2019 and December 2020. According to the USPTO, the inundation of applications has resulted in a “significant increase in unexamined application inventory,” resulting in “longer than normal wait times at various stages of the application process . . . .”
It remains to be seen whether the new response protocols will expedite the examination process or result only generating more USPTO fees.