Changes in Amount of Time Allowed To Respond To Office Actions Issued for Non-Madrid Protocol-Based U.S. Trademark Applications

Beginning December 3, 2022, the deadline to file responses to USPTO Office Actions issued for pending trademark/service mark applications that were filed directly with the USPTO will be reduced from six months to three months from the date the Office Action was mailed. However, Applicants will be able to request a single, three-month extension of time to file the response to the Office Action by paying a $125 government fee.

For U.S. designations of International Registrations (Madrid Sec. 66(a) applications), the deadline to respond to Office Actions issued by the USPTO will remain 6-months from the date the Office Action was mailed (also known as the ”mail date”, which is the date the USPTO sends the Office Action to the International Bureau of the World Intellectual Property Office.)  The USPTO has not announced plans to change the response deadline for Madrid Sec. 66(a) based applications.

Beginning October 7, 2023, the response period for post-registration Office Actions will also be shortened to three months for all registrations, regardless of filing basis.

Please contact us if you have any questions about the changes to timing for responding to Office Actions issued for directly-filed U.S. trademark/service mark applications. You can learn more about this update here. 

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