The Trademark Modernization Act and the New Deadline for Responses to Office Actions

Pursuant to new regulations implemented through the Trademark Modernization Act, as of December 3, 2022, the deadline for submitting responses to Offices Actions in trademark registration processes with the USPTO will be reduced from 6 months to 3 months. The intention is to reduce the analysis time of registration requests, allowing for a faster outcome.

However, the USPTO will provide the opportunity for claim holders to request an additional 3 months in Office Action cases of a more complex nature, upon payment of an official fee in the amount of US$ 125.00. The request for an additional period must be submitted before the end of the new initial period of 3 months, in cases where no response has yet been submitted.

The new deadline for responses will begin to be in effect for Office Actions issued from December 3, 2022, valid for registration requests (applications) submitted under the legal bases (i) “Use in Commerce” (also called “actual use ” or 1(a)); (ii) “Intent to Use”(1(b)); (iii) “Foreign Registration” (44(e)); and (iv) “Foreign Priority” (44(d)).

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For registration requests made under the legal basis of the Madrid Protocol (66(a)), a period of 6 months will be maintained for responses, with no possibility of requesting an extension of time, as the procedure under this modality takes longer. and, therefore, require more analysis time.

Furthermore, in addition to such time reduction implemented by the new regulation, the USPTO will also implement a similar time reduction for responses to Office Actions issued after registration is granted, referring to the examination phase of documents submitted for record keeping (“Post- Registration Office Actions”).

For these cases, the deadline change will only take effect on October 7, 2023 and, until then, detailed guidance on such change will be made available.

If you are interested in learning more about the trademark registration procedure, as well as the innovations brought about by the Trademark Modernization Act, please contact us and one of our specialists will be happy to answer your questions.

Written by Pedro Drummond, Fernando Borges and Luane Oliveira