As pretty much every applicant who has filed a trademark within the past few years already knows, the wait time to see your mark registered with the USPTO feels longer than it takes to grow a waist-length beard. Well, it seems that the USPTO has acknowledged our collective impatience and has issued a new rule to remedy that.

Beginning December 1, 2022, the response time for an Office action issued for a trademark will be shortened from six months to three months. Office actions are issued when the trademark examiner has identified a procedural or substantive issue with an application. These actions are common, and most applications receive one on their route to registration. And thanks to this new rule, this response period change will significantly shorten the applicant’s waiting period for the USPTO’s review! The USPTO will still, however, provide an option to request one three-month extension of the deadline – provided you pay a fee – if more time is needed. This new three-month response period and extension will also be applied to Office actions issued in connection with post-registration maintenance, as well as renewal filings.

This is great news for trademark applicants! And while the registration process will remain a lengthy one, this new rule will be very proactive and at least make the waiting period much shorter so applicants can get back to focusing their energy on more important matters – like grooming their waist-length beard, perhaps?

Read more about this new rule here: https://www.federalregister.gov/documents/2022/10/13/2022-22217/changes-to-implement-provisions-of-the-trademark-modernization-act-of-2020-delay-of-effective-date

What the Trademark Modernization Act Changed

The Trademark Modernization Act of 2020 (TMA), signed into law on December 27, 2020, made the most sweeping changes to federal trademark law in decades. The shortened Office Action response period is only one of several significant changes. The TMA also reinstated the rebuttable presumption of irreparable harm in trademark infringement cases — overruling lower court decisions that had made it harder for trademark owners to obtain injunctions by requiring them to prove irreparable harm as a separate element after eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006). The restoration of this presumption makes preliminary injunctions significantly easier to obtain in trademark infringement cases.

The TMA also created two new expungement and reexamination procedures that allow third parties to challenge trademark registrations based on non-use. Expungement proceedings allow any party to petition the USPTO to cancel a registration for a mark that was never used in commerce with some or all of the identified goods and services. Reexamination proceedings allow challenge of a registration where the mark was not in use at the time the use-based application was filed. These proceedings provide faster and less expensive alternatives to cancellation proceedings before the TTAB for clearing out the “dead wood” of non-used trademark registrations that clutter the register and can block new applicants.

How the Three-Month Response Period Affects Your Application Strategy

The new three-month response period for Office Actions fundamentally changes how trademark applicants and their attorneys must manage pending applications. Under the prior six-month period, there was significant flexibility to gather evidence, conduct research, and draft comprehensive responses. Under the three-month period, that time pressure is significantly greater — particularly for substantive Office Actions that require legal argument, such as likelihood-of-confusion refusals or merely descriptive refusals, which often require evidence of acquired distinctiveness.

The one-time three-month extension is available — for a fee — but even with the extension, the total response window is only six months rather than the former twelve. Applicants who are managing trademark portfolios across many pending applications must track these deadlines carefully, because a missed deadline results in abandonment of the application and loss of the filing date priority. Working with an experienced trademark attorney who uses a docketing system to track all USPTO deadlines is essential for any business with multiple pending trademark applications.

Post-Registration Maintenance Filings and Deadlines

The shortened response period also applies to Office Actions issued in connection with post-registration maintenance filings. When a trademark owner files a Section 8 Declaration of Use or a Section 9 Renewal, the USPTO examiner may issue an Office Action requesting additional information or specimens of use. Under the TMA, the three-month response period applies to these post-registration Office Actions as well. Missing a maintenance filing deadline — or missing the deadline to respond to an Office Action during a maintenance proceeding — can result in cancellation of a federally registered trademark. Given the value of trademark registrations and the cost of obtaining them, missing these deadlines can be an extremely costly mistake. Building a robust deadline management system for trademark portfolio maintenance is one of the core services that a trademark law firm like Revision Legal provides to its clients.

Responding to Office Actions: What the Process Looks Like

When the USPTO issues an Office Action, the response must be substantive and precisely address each ground for refusal or requirement. A likelihood-of-confusion refusal under Lanham Act § 2(d) requires the applicant to address the DuPont factors — the 13-factor test established by the Court of Customs and Patent Appeals in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973). These factors include the similarity of the marks in appearance, sound, and commercial impression; the similarity of the goods and services; the channels of trade; the sophistication of the relevant consumers; and evidence of actual confusion. A well-crafted response argues each relevant factor with supporting evidence — third-party registrations showing the crowded state of the field, declarations from industry participants, or marketplace evidence showing the marks coexist without consumer confusion.

A merely descriptive refusal under Lanham Act § 2(e)(1) requires the applicant to either argue that the mark is suggestive rather than descriptive — which can be done through a careful analysis of the mental steps required to connect the mark to the goods — or to claim acquired distinctiveness under § 2(f) by presenting evidence of long, continuous use in commerce. Five years of substantially exclusive and continuous use creates a prima facie case of acquired distinctiveness under the statute, but examiners may require additional evidence — sales figures, advertising expenditures, consumer declarations, or survey evidence — to be persuaded.

Working with an experienced trademark attorney who understands USPTO examination practice ensures that Office Action responses are focused, persuasive, and filed within the shortened three-month window. A missed deadline or an inadequate response can result in abandonment of an application that represents thousands of dollars in filing fees and months of waiting time — and loss of a filing date that may have provided priority over a competitor’s later application.