In my blog article of October 12, 2022, I discussed the imminent shortened three-month response periods that will face trademark applicants starting on December 1, 2022. Toward the end of the article I described what I saw as two “gotchas”, namely ways that an applicant could end up with an abandoned trademark application if the applicant were to choose to try to tough it out and hold back from paying the $125 extension-of-time fee. Alert reader Michael Brown points out that depending upon the level of kind-heartedness in your Examining Attorney, you might not end up running afoul of the “gotchas”.
Here is what I wrote in that blog article about “gotchas”:
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.
Where did I find these gotchas? To see these gotchas, look at the Trademark Office’s web page New deadline to respond to office actions for applications which is archived here. What it says on this page is:
Response to all issues required by the deadline
[…] When responding to office actions, make sure you’re providing a complete response that addresses all outstanding issues in the office action. […]
What happens if the response deadline isn’t met?
Your application will be abandoned if you don’t respond to your office action or request an extension on or before the three-month deadline. This means we will no longer process your application. You will need to file a petition to revive your application for a fee, or start the application process over again.
It seems clear that the Trademark Office intends this to be a “gotcha”. If you are an applicant filing a response that you hope will be “complete”, before the end of the shortened three-month period, you have no choice but to consider that the Examining Attorney might feel differently about whether the response is “complete”. The way to avoid risk of abandonment in the event that the Examining Attorney feels this way is, of course, to hand over the $125.
Which brings us to the point of today’s blog article. Alert reader Michael Brown points out, correctly, that the Trademark Office final rule that implemented this shortened three-month response period does authorize the Examining Attorney to cut you some slack on this, if the Examining Attorney feels like doing so. Michael draws my attention to newly revised 37 CFR § 2.65(2) which says:
When a timely response by the applicant is a bona fide attempt to advance the examination of the application and is a substantially complete response to the Examining Attorney’s action, but consideration of some matter or compliance with a requirement has been omitted, the Examining Attorney may grant the applicant 30 days, or to the end of the time period for response to the action to which the substantially complete response was submitted, whichever is longer, to explain and supply the omission before the Examining Attorney considers the question of abandonment.
(emphasis added.) Note that the EA is not required to cut you this slack. If the EA declines to cut you the slack, then you have an abandonment on your hands, and you are stuck preparing and filing and paying for a petition to revive. Note, too, that this discretion that is afforded the EA is conditioned upon the response that failed to be “complete” nonetheless being at least “substantially complete”.
Only time will tell to what extent EAs will actually choose to grant such 30-day “mulligans” to those who (a) file a response that turns out to fail to be “complete”, and who (b) passed up the opportunity to pay the $125 extension-of-time fee as a sort of “insurance” against this risk.
Thanks to Michael for pointing this out.
3 Replies to “Exploring the “gotchas” in the imminent shortened three-month trademark response period”
Perhaps I’ve slipped a gear from being up all night, but isn’t the abandonment Gotcha applicable only if responding to a Final Refusal (of course the 3 month rule deadline applies more generally?
The USPTO website states: “You can only file the Request for Extension of Time to File a Response form if you haven’t already filed your response.”
If one files a “response” and an extension request the next day, and the response is accepted, is the extension request ignored?
Conversely, If one files a “response” and an extension request the next day, and the response is bounced because it is not fully responsive, is the extension request applied on the basis that the “response” was not really a response?
If the answers are yes and yes, it would make sense to file extension requests as a safety measure.
It seems to me it would be inconsistent to deny an extension request filed after a “response” and later determine that the “response” wasn’t really a response and abandon the application. On the other hand, the USPTO could take the position that a foolish consistency is the hobgoblin of little minds.
I have not seen any mention if this rule will be applied to Priority Actions. Anyone have any intel?