By Enrique Tarazona
On November 17, 2021, the USPTO published in the Federal Register a final rule amending the Rules of Practice in Trademark Cases to implement the provisions of the TMA, this is 86 FR 64300.
As part of that final rule, the USPTO amended 37 CFR 2.62 to:
- establish a three-month period for responses to Office actions on applications under sections 1 and/or 44 of the Trademark Act (Act),
- and provide the option of requesting a single three-month extension of the time period, subject to the payment of a fee.
The new USPTO fee is $125, regardless of entity size.
The three-month response period and extension provisions for Office actions issued in connection with applications became effective December 3, 2022. Thus, Office actions received on or after this date are subject to the new rules.
The three-month response period and extension also applied to Office actions issued in connection with post-registration maintenance and renewal filings. The deadline for responses to Office actions issued in connection with applications under section 66(a) of the Act was not changed in that final rule and remains six months.
The three-month response period and extension provisions for Office actions issued with respect to post-registration maintenance filings will be effective October 7, 2023.
Previously, applicants could wait the entirety of a six-month response period in which to decide whether to file and actually file a response. Now, the applicant must at least make a decision as to whether to file a request for a three-month extension of time, resulting in additional USPTO fees.
So if you are a trademark applicant, you should be more proactive in reviewing Office actions if you want to avoid additional fees.