Some of you may have seen my LinkedIn CueCards post on the day the U.S. Trademark office announced that it will reduce the time to respond to a trademark office action from six to three months. As detailed in that post, the pre-registration office action reduction goes into effect on December 3, 2022 and post-registration reduction is in October 7, 2023. From a strategy standpoint, what should you be doing to prepare?
For companies with smaller portfolios, the impact of this change is probably not a true concern. But companies with large portfolios and foreign law firms filing in the U.S. should look hard at how they will adapt to the new schedule. There are three key areas to consider.
Docketing
You should be talking to your docketing provider now to ensure that they will be adjusting settings within their software to ensure that it correctly calculates the new response deadline for office actions received after December 3rd. Note that the USPTO excluded Madrid filings from the new deadlines so some applications may remain on a six month schedule. Any staff interacting with the docketing system should be trained on any nuances of the docketing system that need to be followed to ensure proper docketing of all deadlines.
Costs and Timing
From experience, large trademark portfolios and multi-national companies come with lots of moving pieces. To get the information needed for a response, an affidavit or specimen showing use can require multiple levels of communication across several locations. While three months may sound like plenty of time to prepare a response to an office action, more time is often needed to communicate and prepare the response.
The price to extend the response period by three months is currently $125 according to the USPTO announcement. This is a modest charge but multiplied across a large corporate portfolio or a series of foreign filings, it can become significant. It is also foreseeable that the USPTO will raise this fee.
Process
A good analogy to this change at the trademark office is the change to a first to file system for patents. During that time, I counseled large companies on how streamline internal processes to shorten the time needed to prepare a patent application. Here, the end game will be to shorten the time frame needed to prepare a response to avoid fees for extensions of time.
As noted above, responses get bogged down in communications, getting appropriate examples of use and preparing affidavits. From an in-house perspective, I would look for ways to shorten the chain of communication needed to get trademark counsel the information needed for a response.
From a law firm perspective, making reporting more direct will expand the amount of time available for response. For example, in my role as in-house counsel, reporting letters from my external counsel typically ranged from one week to three weeks after they received the office action depending on whether it was a local matter or one coming to them from a foreign associate. Automated notices and cutting out the middle man greatly shortens these time frames.
For additional ways to streamline corporate and law firm IP processes tailored to your specific needs, please do not hesitate to contact me at smccue@cuecardslegal.com
For more details from the trademark office, go to the following link. https://www.uspto.gov/trademarks/laws/2020-modernization-act/new-response-deadline-applications