By: Farzad A. Panjshiri

The trademark bar and its clients, trademark owners, have been clamoring for some dramatic changes to procedural trademark rules for some time because of a significant increase in fraudulent trademark applications and “deadwood” registrations (registered marks not being used in U.S. Commerce); and changes to the federal trademark statute governing U.S. Patent and Trademark Office (“USPTO”) examination procedures to provide the USPTO with greater flexibility to enact new procedures and rules addressing the aforementioned issues. These changes required amendments to existing statutes that only Congress had the power to do, and the Trademark Modernization Act of 2020 (“TMA”) buried in a huge Consolidated Appropriations Act at the very end of 2020 was apparently the legislative answer.

The federal trademark statute had always required a 6-month response period for applicants to respond to USPTO office actions refusing registration of their mark. This constrained the USPTO, preventing it from establishing office actions with shorter response periods to enforce purely procedural rules such as the new U.S. attorney requirement and related applicant domicile disclosure rules. The USPTO also noted that the six-month response period likely extended examination times unnecessarily and could enable applications that don’t belong on the Register to remain pending and block more meritorious applications or registrations. 

Consequently, the TMA amended 15 U.S.C. Section 1062(b) allows the USPTO to set the response periods for office actions for applications and post-registration actions to a period as short as 60 days and as much as six months with extension filings. USPTO data suggested that most office actions with only formal issues are typically responded to within that time frame anyway, so a shorter response period would likely expedite the examination process and declutter pending applications.

The USPTO, therefore, changed the response time to directly-filed U.S. national application office actions and post-registration office actions to 3 months from office action issuance. The USPTO deliberately excluded from this rule applications based on an International Registration, which have to pass through the World Intellectual Property Organization to each individual country, and which are therefore received later by these non-U.S, applicants. Applicants can request a single 3-month extension to extend the deadline to 6 months by filing a TEAS electronic extension form for $125 or a paper extension form for $225. The USPTO must receive the extension request on or before the 3-month deadline, or else the application will be abandoned. A petition to revive an unintentionally abandoned application after the 3-month deadline is possible and would also require payment of the extension fee. While this practice is new to examining and prosecuting trademark applications, the 3-month office action deadline has proven its worth in patent examination.

These rules regarding shorter application and post-registration office action deadlines are being implemented this year, on December 1, 2022, despite other provisions of the TMA being implemented before the end of 2021. The USPTO delayed the implementation of these new deadline rules to provide the USPTO, especially its IT systems, with more time to execute the changes in its examination processes. More importantly, other actors in the trademark industry like the USPTO’s constituent applicants and their representatives, as well as the various vendors serving those constituents, will need time to significantly adjust their procedures and products to conform to 50% shorter deadlines than what existed for the previous decades and with additional extension filings and fees.

While the trademark bar and mark owners are not seemingly objecting to this change and recognize that these 3-month deadline rules will likely promote shorter examination times for applications and result in the faster examination of later filed similar marks, these dramatic changes to daily USPTO trademark practices that have existed for decades will significantly impact the USPTO’s customers and require some serious attention to the management of applicants’ dockets. 

To learn more about Dunlap Bennett & Ludwig and how we can help preserve your IP assets, contact us by calling 800-747-9354 or emailing clientservices@dbllawyers.com.


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Posted in: Intellectual Property - Trademarks

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