It’s extremely common to receive a trademark office action from the United States Patent and Trademark Office (USPTO) after filing a trademark application. You may also receive an office action after filing the Statement of Use or an Amendment to Allege Use. If you don’t file a response that addresses the issues raised in the office action within three months of the office action being issued, then your trademark application will go abandoned.
But what if you can’t file a response by the three-month deadline? What if you need more time to conduct research and to draft an argument to attempt to overcome a major rejection (such as a likelihood of confusion refusal)? Maybe you require some additional time to discuss the office action with the examining attorney in charge of your application? Perhaps you need time to seek the assistance of a skilled and knowledgeable trademark attorney? Whatever the reason, you can file a Request for an Extension of Time to File a Response to the office action.
Please be aware that this article does not apply to a post-registration office action or an office action issued by the USPTO with regard to an extension of protection filed through WIPO under the Madrid Protocol. Those specific office actions have a non-extendible six-month deadline for responding to them. However, this article does apply to a Suspension Inquiry issued by the USPTO.
When Do I Have to Submit the Request for an Extension of Time to File a Response?
You must submit the Request for an Extension of Time to File a Response before the initial three-month deadline passes. So, if the USPTO issued the office action on January 15, then you must submit the Request no later than April 15. If you miss the deadline, your trademark application will go abandoned and you’ll have to start the trademark registration process from scratch (unless you’re eligible to file a Petition to Revive).
How Do I Submit the Request?
After logging into your USPTO account, you must submit the Request for an Extension of Time to File a Response and the associated filing fee through the Trademark Electronic Application System (TEAS). All you will need to complete the Request is the serial number of your trademark application and an acceptable form of payment.
What Happens After I File the Request for an Extension of Time to File a Response?
The USPTO automatically grants the Request for an Extension of Time to File a Response upon submitting it. You won’t receive any confirmation of the Request being granted other than the receipt that the USPTO emails to you immediately after filing.
Upon submitting the Request, the initial three-month deadline to respond to the office action is extended another three months. So, if the USPTO issued the office action on January 15, then you must now submit a response to the office action no later than July 15 (which is six months after the issuance date of the office action). No further extensions are permitted.
Please note that if the office action you received is a final office action, then you will need to file a Request for Reconsideration with the USPTO and/or a trademark appeal with the Trademark Trial and Appeal Board (TTAB) by the extended deadline. Otherwise, your application will go abandoned.
Can I Be of Any Assistance to You?
I’m experienced US trademark attorney Morris Turek. If the deadline for filing your office action response is fast approaching, but you don’t think you’ll be able to meet the deadline, I would be glad to help you submit a Request for an Extension of Time to File a Response. Just give me call at (314) 749-4059, send an email to morris@yourtrademarkattorney.com, or use the contact form located toward the bottom of this page to send me a message. I look forward to hearing from you soon.