Extending the time to respond to trademark office actions

Extending the time to respond to trademark office actions

  • 17 April, 2024
  • Nyall Engfield

When responding to an Office Action from the United States Patent and Trademark Office (USPTO) regarding a trademark application, there are several ways to extend or prolong the time allowed for a response. These extensions can be crucial for gathering additional evidence, formulating a legal strategy, or awaiting developments, like registration or abandonment of similar marks, that might impact the trademark application. Here are the primary methods:

  1. Requesting an Extension of Time:

    • Initial Extension: For non-final Office Actions, you can request a one-time extension of three months of up to six months to respond (three months in the normal response period and three months of extension). This request must be filed before the original response deadline expires and requires payment of a fee.
    • Final Office Actions: Extensions are not typically granted for final Office Actions unless under extraordinary circumstances.
  2. Petition to Revive:

    • If you miss the deadline to respond to an Office Action, you can file a "Petition to Revive" the application based on unintentional delay. This requires paying a petition fee and providing a statement that the delay in response was unintentional.
  3. Suspension of the Application:

    • Suspension for Conflicting Applications: If your trademark application conflicts with a prior-pending application, you may request to suspend your application until the prior application is resolved. This helps if the outcome could affect your trademark's registrability. This typically takes a while, especially if the other pending mark is awaiting proof of use, since the applicant may request up to three years to show use.
    • Suspension for Negotiation or Settlement: If you are in negotiations or legal proceedings that might affect the trademark application, such as a coexistence agreement or settlement with another trademark holder, you can request a suspension. You can also request an extension of time to await a re-examination of another mark, which has the benefit of verifying the actual use of a mark that may be standing in your way.
    • Suspension to Await Renewal of Another Registered Trademark: If your registration decision might depend on whether another trademark is renewed, you can request to suspend your application pending the renewal outcome of the other registered trademark. This is particularly relevant when the registrability of your trademark may be impacted by the status of the earlier mark. You can typically only request the extension at the beginning of the grace period for renewal, however.
  4. Amendment of the Application:

    • You can sometimes indirectly extend your response time by amending the application, such as by narrowing the list of goods/services or amending the mark itself. Such amendments might require additional review, possibly re-publication (if filed after the first publication) and possibly a new Office Action, indirectly giving more time.

Each of these strategies has specific procedural requirements and potential implications for the trademark application process. It's often advisable to consult with a trademark attorney to navigate these options effectively, ensuring that the approach taken aligns with both legal standards and strategic goals for the trademark's protection.

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