It is not uncommon to receive a trademark office action from the United States Patent and Trademark Office (USPTO) shortly after filing a trademark application. Trademark office actions can also be issued after the filing of a Statement of Use or an Amendment to Allege Use.
A Statement of Use is a signed declaration establishing that you are currently using your trademark in commerce in connection with all of the goods and/or services identified in the application.
If you applied as a Section 1(b) (intent-to-use), you will need to prepare and file a Statement of Use before the USPTO will issue a registration for your trademark.
While an Amendment to Allege Use is a sworn declaration filed with the USPTO reflecting that you are currently using your trademark in commerce in connection with all of the products/services recited in your trademark application.
If you do not file a complete response addressing the identified issues within three months from the date of the office action, the trademark application will be abandoned.
But what if three months is not enough time? You may need more time to analyse the issues, prepare an argument to contest a major refusal, like a likelihood of confusion, or even consult directly with the examining attorney.
You might also want to consult with an experienced trademark attorney to resolve these issues. In these situations, you can file a request for an Extension of Time to file a Response to the office action.
Although keep in mind that these guidelines do not apply to post-registration office actions and office actions involving extensions of protection filed through WIPO under the Madrid Protocol, since both of these types of office actions have an unextendable six-month response time. However, they do apply to Suspension Inquiries issued by the USPTO.
Deadline for the trademark extension request
The extension request must be filed before the original three-month deadline. For example, if the office action is dated August 22, the request must be filed on or before November 22. If you miss the original deadline, your application will be abandoned unless you can file a Petition to Revive.
A Petition to Revive is a formal request to the USPTO to restore a trademark application that has been abandoned because the applicant has failed to meet a response period. The Petition to Revive is only available to the applicant if the matter of failing to respond timely was unintentional.
(To file the Petition to Revive, the applicant must fill out the required USPTO form, pay the fee, and file the response or submission that caused the application to be abandoned. If the Petition to Revive is granted, the trademark application processes as if it had never been abandoned.)
Filing the Request for Extension of Time
Request for an Extension of Time to respond to a trademark office action is completely done online through the USPTO using the Trademark Electronic Application System (TEAS).
To request the extension, you will need to log into your USPTO account, provide the serial number of the trademark application, and pay the required filing fee using an acceptable payment method.
This is an easy process, as there is no need to submit supporting documents or explain the reason(s) for requesting more time. Once your request has been submitted, the USPTO auto-grants the requested extension and emails you a receipt when the request is submitted.
The USPTO extension process can be initiated through the Trademark Status and Document Retrieval (TSDR) system. This is an online search system and service affiliated with the USPTO. With TSDR, you may access complete and current data about applications or registrations of trademarks and access documents in the form of official correspondence.
The database also allows you to check the status of a trademark, view all documents filed in or issued from a trademark application or registration record, monitor certain deadlines and due dates, and download the official correspondence from the record, as well.
This platform is a convenient means of allowing applicants, authorised representatives (e.g. attorneys), and users in the public domain to monitor the progress of an application for or registration of a trademark, as well as verify information in the USPTO’s databases on trademarks.
Once you request the extension using the TSDR, it will automatically be in place. The request gives you a new filing date three months after your original due date. You now have a total of six months from the date the office action was issued to file a complete response. There will be no additional extensions beyond this one extension of three months.
What happens to the Office Action after filing the Request?
The USPTO will automatically grant the extension, and the only confirmation you will have is the email receipt you receive when you file.
The original three-month time period to respond would be extended to six months from the date of the office action. For example, if the USPTO issued the office action on August 22, the original deadline to respond would become February 22. However, no further extensions will be granted.
Why should you opt for a Trademark Attorney for your Office Action issues?
An experienced attorney can guide you on how to file an extension request to seek additional time to respond to a trademark office action. While requesting an extension of time is not difficult to file, the real value comes with how the attorney will use that time.
The trademark attorney can review the office action, identify the weaknesses in your application, and develop the best approach for addressing the concerns of the examining attorney.
A trademark attorney can also help develop strong legal arguments and collect evidence necessary to overcome filings, such as a likelihood of confusion refusal or arguments involving the description of goods and services.
An experienced attorney has the benefit of working with roughly similar cases and can ensure that your eventual response also meets the same requirements set by the USPTO, avoiding the many traps that could lead to abandonment of your application.
In addition, attorneys can communicate directly with the examining attorney at the USPTO. This communication could help narrow or clarify issues and could lead to the informal resolution of minor objections, to avoid a formal written response.
If the office action is final, an attorney can also advise you as to whether a Request for Reconsideration, an appeal with the Trademark Trial and Appeal Board (TTAB), or some other remedy is appropriate before the deadline for the extension has expired.
Generally, working with an experienced trademark attorney will not only make the most of the extension period but also give you the best chance of a successful registration without taking unnecessary time or making procedural mistakes.
At Drishti Law, you can book a free consultation today with our experienced principal attorney, who can assist you in your trademark registration from the stage of applying to getting it approved.
Sahil Malhotra
Sahil Malhotra is an Intellectual Property Attorney, who founded Drishti (“vision”) law because of his vision in protecting dreams and ideas.
He provided individuals and small businesses with an opportunity to enhance their IP’s value by helping them register trademarks and successfully argue against office actions. In addition to his training and experience, he has been deeply involved in the multifaceted IP portfolio at UIC and continues to be associated with IP organizations and conferences.
To know more about Sahil Malhotra — Click Here
You may follow Sahil Malhotra on Facebook: Sahil Malhotra and on Instagram: @Sahil Malhotra