USPTO –Presumptively– Fast Tracks Trademark Registration
Taking effect on December 3rd, 2022, the United States Patent and Trademark Office’s (USPTO) most recent rule change aims to impact all trademark applications submitted directly in the US. However, those applications filed under the Madrid Protocol will not see their time allowances affected by this new rule change –i.e. these will remain at six months.
Affected applicants will now have three months to file their office action responses instead of the current six-month window. In exchange for an extension filing fee though, a single three-month extension may be made available for applicants to respond to each office action –i.e., $125 for internet filings, and $225 for paper filings.
The USPTO has decided this same change will also impact office action response windows for post-registration office actions starting October 7th, 2023.
The rule change aims to shorten the timeframes to maintain and renew trademark registrations, and more importantly, to accelerate the handling of new trademark application registrations at the USPTO. The available three-month extension fee/option is intended to allow for applicants to retain a certain level of flexibility sometimes required by more complex and resource-intensive office action responses.
One may therefore presume that examination timeframes will be consequently shortened, allowing for quicker registration decisions. The USPTO however, has not provided any projections to substantiate such presumptions.
Nevertheless, if successful, this will prove highly useful for online brand enforcement and takedown requests, where –prior to acting– commercial host platforms require that claimants submit a certificate of registration for any such request. This adjustment aligns the USPTO with other predominant trademark offices abroad, where trademark prosecution tends to move at a quicker pace, such as the EU and UK.
Andres Escalante, Esq.
About the Author: The founding partner and principal at the Escalante Law Group, Andres Escalante is a registered patent practitioner with the USPTO, having earned his Juris Doctor degree from Indiana University, and a B.S. in Electrical Engineering at the University of Central Florida. Currently residing in Palm Beach, Florida, Andres has enjoyed writing on Intellectual Property topics since 2011.
