Trademark Blog

What is a Request for an Extension of Time to File a Response to an Office Action?

Request for an Extension of Time to File a Response

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.

How Does the US Trademark Application Process Work?

US trademark application

It’s pretty common for clients to ask me about the US trademark application process and what they should expect once their application is filed. Needless to say, the road to registration can be very bumpy at times, more so for applicants who didn’t perform a trademark search or failed to seek an opinion from an experienced trademark attorney regarding the eligibility of their trademark for registration. If you’re thinking about navigating the trademark application process yourself, it’s even more important that you fully understand the entire process to maximize your chances of successful registration with the United States Patent and Trademark Office (USPTO).

What are the Benefits of Getting a Trademark Registration?

trademark registration

There are many benefits associated with getting a trademark registration for the names, logos, and taglines you use (or intend to use) in connection with the advertising and sale of your products or services. Personally, I like to think of a US trademark registration as an insurance policy. You purchase automobile insurance in case you’re involved in a car accident. You buy homeowners insurance in case your house goes up in flames. And you purchase health insurance in case you become seriously ill. Of course, you hope you never have to use your insurance policies, but you’re extremely glad you bought them if a tragedy or disaster does occur. Similarly, a trademark registration is like insurance on your trademark. It protects one of your most valuable business assets and assists you in recovering the monetary damages you’ll likely suffer as a result of an unexpected infringement or misappropriation by someone else.

What is a Surrender of a Trademark Registration?

surrender of trademark

A surrender of a trademark registration is a voluntary request that the United States Patent and Trademark Office (USPTO) cancel the registration. There are a handful of reasons why you might choose to voluntarily surrender your trademark registration. For example:

You’re no longer using your trademark in commerce and have no plans to resume use
A trademark cancellation or concurrent use proceeding was filed against your registration
You entered into a settlement agreement with a third-party that requires surrender of your trademark registration
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What is a Canceled Trademark Registration in the USPTO?

canceled trademark

A canceled trademark registration in the United States Patent and Trademark Office (USPTO) is a trademark registration that’s no longer valid. Once a registration is canceled, it’s considered dead and cannot be used by the USPTO to refuse registration of a trademark filed by someone else. The owner of a canceled trademark registration loses all of the benefits of trademark registration, and it potentially creates a situation where someone else could register a confusingly similar trademark for identical or related products/services.