Practice Areas

What to Know About Shortened USPTO Trademark Response Deadlines

January 27, 2023

As many are aware, the U.S. Patent and Trademark Office (USPTO) is behind in examining trademark applications. While wait times between filing and examination used to run about three months, that window has bloomed to a whopping eight- to 12-month stint in the USPTO waiting room. This has greatly slowed the overall registration clock, and while it may be some time before these introductory wait times (and frustrations) ease, the USPTO has launched a new examination procedure to accelerate the registration process.

Three-Month Initial Response Window – Extendable for a Fee

Prior to December 3, 2022, applicants had six months to respond to official actions issued during examination. This is now shortened to an initial three-month response window. However, if more response time is needed, the applicant may request and secure a three-month extension to submit the required arguments, evidence, and/or information.

While responding to official actions carries no USPTO fee, this extension of time will cost $125, so responding quickly to official actions will help applicants stay in budget and move applications along more quickly.  

Applications Subject to the New Three-Month Response Window

This shorter response time applies to applications based upon use in commerce (1(a)), intent-to-use (1(b)), and to applications based upon prior foreign filings (44(d)/44(e)) only. Applications filed under the Madrid Protocol system (66(a)) will still have the full six-month period, fee-free, to respond to USPTO official actions.

In addition, the shorter response window applies to the initial examination phase only. Response times for any official actions or inquiries issued after the initial examination phase closes remain the same as of now. Plans are in the works to shorten these deadlines, but not until October 2023 at the earliest.

Finally, the shorter response window applies only to official actions issued after December 3, 2022. Timelines for official actions issued before December 3 will still enjoy the full six-month response period, sans fee.

For More Information

You may consult the official USPTO new response deadline guide here, and we hope the above provides a valuable introduction to this new phase in U.S. trademark procedure.

If you have any questions, please reach out to one of the attorneys on our Trademark Team.

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