The United States Patent and Trademark Office, or USPTO, handles registration and issues decisions for all trademarks and patents in the US. Operating within the US Department of Commerce, the office registers trademarks, grants patents, protects intellectual property rights in the US, promotes international intellectual property protection throughout the world, and advises the president, secretary of commerce, and other government agencies on intellectual property policy. USPTO deadlines play a crucial role in the application and renewal process, making it essential to stay informed and compliant to protect your intellectual property rights.
The USPTO application process has specific deadlines that you must meet whether you’re filing your first trademark application or maintaining one. Missing a deadline can lead to the loss of your trademark.
Important USPTO Deadlines
You must also know about several important deadlines applications when planning a trademark application:
- Office Action Response: Applicants have 3 months to respond to an office action issued during the examination of a trademark application. This deadline was shortened from 6 to 3 months for office actions issued on or after December 3, 2022.
- Extension Request: If needed, applicants can request a 3-month extension to respond to an office action, which must be filed before the initial 3-month deadline expires and includes a $125 fee.
- Statement of Use (SOU): For intent-to-use applications (Section 1(b)), applicants have 6 months from the Notice of Allowance date to file a Statement of Use or request an extension.
- Opposition Period: After a trademark is approved for publication, there is a 30-day period during which anyone can file an opposition.
- Maintenance Filing: The first maintenance filing is due between the 5th and 6th year after the date of registration.
- Renewal: The first renewal is due between the 9th and 10th year after the registration date and every 10 years thereafter.
The USPTO’s full timeline is available online.
Failing To Respond to the USPTO Application Process
These USPTO deadlines are strict. Missing a deadline can mean the application is considered abandoned or the registration will be cancelled. The USPTO typically uses Eastern Time (ET) for all deadlines.
The USPTO will presume that the trademark application is abandoned if you fail to respond to notifications. Abandoning a trademark application can lead to several consequences:
- Loss of Application: The most immediate consequence is that the USPTO will terminate the application and the trademark won’t be registered.
- Public Record: The abandoned application becomes part of the public record, showing as a “dead” trademark in USPTO records. Competitors and the public can find this information and potentially use it.
- Future Registration Challenges: Abandonment may make it more difficult to register the same or a similar trademark in the future. There’s no guarantee that a new application for the identical mark would be approved.
- Judgment Against The Applicant: If a trademark opposition or concurrent use proceeding has been filed against the application, abandoning without the written consent of all adverse parties can result in a judgment against the applicant. This judgment may bar future registration of the same or substantially similar mark for the same goods/services.
- Loss of Priority: Abandoning an application means losing any associated priority date.
- Potential Market Occupation: Competitors may take advantage of the abandoned application to occupy the market space intended for the trademark.
- Perception Issues: Abandonment might be perceived as a lack of commitment or instability, potentially affecting the applicant’s reputation or future intellectual property endeavors.
- Financial Loss: Any fees paid during the application process are non-refundable.
- Generic Mark Risk: In some cases, abandonment could contribute to a mark becoming generic if not properly managed.
The severity of these consequences can vary depending on the specific circumstances of the abandonment and when the application is abandoned. Strategic abandonment might be beneficial in some cases. However, you should carefully consider doing so in light of the risks of these potential consequences.
It is possible to revive an abandoned trademark application. Working with a trademark attorney can ensure that your deadlines are met for applications and throughout the USPTO application process.
Trademarks For Your E-Commerce Company
The Law Office of Lindsay Kaplan has been helping e-commerce companies throughout the United States protect their intellectual property with trademark applications, trademark licenses, trademark clearances, disputes, and enforcements since 2016. Contact our office today by phone at 1-845-417-7817, via email at team@lkaplanlaw.com, or our website.