Yes, folks, Saturday, December 3, 2022 will be the day. Starting December 3, you will only get three months to respond to a USPTO trademark Office Action instead of the usual six months. This article hopefully answers some of your questions about this change.
Will this affect the response period for Office Actions mailed before Saturday, December 3, 2022? No. This will affect only the response period for Office Actions mailed Saturday, December 3, 2022 or after that day.
What if I need more than three months? If you need more than three months, you can purchase the remaining three months (restoring the response period to the statutory six months) by paying $125.
So this works just like extensions of time in USPTO patent cases? No! It is quite different, in many ways, as this table details.
| Patent | Trademark | |
| small entity or micro costs less? | yes | no |
| you can get one, two, or three months of extension? (or four or five months for certain steps) | yes you get to pick | no, you can only get three months of extension, no more and no less |
| when you must pay? | you may pay in arrears | You must pay before the three months has run out |
| how much money? | $55 to $3160 depending on entity size and number of months of extension | $125 |
Post-reg? No, this will not apply to post-registration Office Actions. The change from six months to three months will not happen for post-reg Office Actions until October 7, 2023.
Madrid cases? No, this will not apply to cases with a 66a filing basis (US designations from international trademark registrations). Those cases will continue to get the full statutory six-month response period.
Gotchas? Yes, there will be gotchas. If you respond within the three-month period, but if the Examining Attorney says you have failed to “respond to all issues”, whatever that means, then your case will have gone abandoned and you will have to petition to revive.
Suppose you respond within the three-month period, and you supposedly fail to “respond to all issues”, and there is still some time left before the end of the three-month period, and the Examining Attorney delivers this bad news to you before the end of the three-month period. In such a case, the Examining Attorney will let you know that to avoid abandonment, you can pay the $125 fee to purchase the remaining three months of response time.
Is the gotcha related to failing to respond to all issues really different from today? If I file a response near the 6-month period and the examining attorney says I failed to respond to all issues, I’m actually worse off today than if I do that under the 3-month regime and the EA says that in time for me to file an EOT,.
If you pay the extension fee and then the applicant decides not to respond to the OA, then the $125 is just gone?
At present it appears that the average time to get an application assigned to an examiner has increased from 3 to 4 months to more than 9 months. If real goal is to decrease the time it takes to get a registration or a renewal, it seems the simplest answer is for the Office to fix what is broken and not penalize its customers for the Office’s inability to keep up.