In an effort to speed up its slowing trademark registration turnaround times, the United States Patent and Trademark Office has shortened the deadline to respond to initial reviews of applications.
Trademark applicants now have three months (with an additional and optional three-month extension) instead of six to respond to USPTO office actions. The change only applies to office actions issued on or after December 3, 2022.
From 2008 to 2019, the average time it took the USPTO to issue a first office action—the initial review of an application—was about three months. Beginning in the fourth quarter of 2020, however, the average time until the first office action issuance has nearly tripled, reaching 8.3 months in the final quarter of 2022.
The backlog at the Trademark Office is due to a variety of factors: the COVID-19 pandemic, trademark filings that jumped over 27% in 2021, and a rash of filings from foreign entities. While the Trademark Office has ramped up its hiring of examiners to deal with the crush, the backlog remains an issue going into 2023, and we are still seeking delays of eight to nine months before an application is examined.
The new response deadline change is aimed at speeding up the process for registration, but, in reality, it’s unlikely that the three-month turnaround will make much of a dent in wait times until the backlog is cleared.
Here is more information about the new deadline and strategies for new trademark applicants to consider.
What does the deadline change mean for trademark applicants?
There are some exceptions to the new three-month deadline.
For office actions issued December 3, 2022 or later, you can request one three-month extension for a $125 fee by filling out the Request for Extension of Time to File a Response form. While most practitioners should have no issues meeting the three-month deadline, the optional extension gives owners already familiar with the old timeline a softer landing.
The deadline for responding to office actions for Madrid Protocol section 66(a) applications will remain at six months, and you can’t request an extension on those.
Also, the new deadline won’t apply to post-registration office actions until October 7, 2023.
How should applicants adjust their approach?
Again, while the new three-month deadline won’t be a problem for most owners, the backlog at the Trademark Office still exists. Last year we offered several suggestions for working around the backlog. While trademark applications are for the most part considered on a first-come-first-served basis, these strategies can make the process more efficient.
- Comprehensive searches: A company considering a new mark should conduct one instead of just a preliminary, scan, or knock-out search. A comprehensive search includes results for databases such as state business and trademark registries, domain names, common law (i.e. unregistered) marks, and website results, along with a more robust search of the USPTO database. This will help you understand potential challenges before filing an application, saving time and money months down the road.
- Narrowing the scope: In many cases, an attorney will recommend that the application cover the broadest range of goods and services for which the applicant plans to use the mark. This is both because broad descriptions, obviously, give broader protection, but it’s also because goods and services can be deleted after an application is filed but cannot be added to the same application. But if an applicant knows from the search results that a prior registration would block a broadly worded identification, a more narrow application could be the more efficient route to obtaining a quick registration.
- Single-class applications: Goods and services in a trademark application are classified under 45 different headings, called classes. An application may cover multiple classes, but there is a separate filing fee for each class. If an applicant anticipates a challenge to one class but not another, it could file two separate single-class applications. For example, if the search turns up a potential challenge to the mark used with “t-shirts” but not “toys,” a separate application for toys might go forward faster than a single application covering both items.
- TEAS Plus: The USPTO has a tiered system of filing fees. If an application meets certain requirements, including selecting goods/services from a set list, it may qualify to be filed under the type of application with the lowest filing fee, called TEAS Plus. (TEAS stands for “Trademark Electronic Application System.”) Using TEAS Plus can help streamline the process by using descriptions of goods and services that are already approved in the Trademark ID Manual, a directory of descriptions of goods and services.
- Use-based filing: With exceptions for some applications filed by non-U.S. applicants, each applicant must prove that the mark has been used to sell the covered goods or services in the U.S. before the registration will be issued. If an application is filed without this proof of use (such as images of the mark on packaging for goods), the applicant will eventually need to file it. If evidence of use can be included in the initial application, this will avoid another step in the process—along with additional fees—later.
Carrie Bader is the head of Erise’s trademark practice and counsels clients in all aspects of trademark prosecution, enforcement and litigation. She can be reached at carrie.bader@eriseip.com.