The US Trademark Office is making a significant change in its fees. Currently, when an application to register a mark is rejected, we have 6 months to respond to the rejections, and there was no penalty for waiting to the end of the 6-month period to respond. In fact, in some instances, such as if a blocking application or registration looks like it is about to lapse, we would want to wait until close to the end of the 6-month period to respond.
However, new a new rule is going into effect December 1, 2022. For refusals issued on or after December 3, 2022, the response period is effectively split into two portions. During the initial 3-month portion, a response can be filed as usual. However, if a response is not filed by the end of the 3rd month, an extension of time fee of $125/class if filed electronically ($225/class if the extension is filed via paper) will need to be paid by the end of the 3-month period to avoid abandonment of the application.
It can seem like the deadline is far in the future when we report on an office action in a trademark application. However, time can pass quickly. In view of this change, it is thus more important that you review trademark application refusals and discuss them with your attorney early so that responses can be prepared within the initial 3-month period or so that a tactical decision can be made as to the value of paying the extension of time fee.
