A Perspective on USPTO Rulemaking Following In re Chestek, by Maier & Maier partner Robert Bahr, has been published on IP Watchdog. The article discusses the notice-and-comment rulemaking procedures practiced by the USPTO and the impact of the recent Federal Circuit decision in In re Chestek. You can read the full article here.
On December 3, 2022, the United States Patent and Trademark Office will shorten the response deadline for Trademark office actions from 6-months to 3-months. This shortened deadline will apply to all office actions issued on or after December 3, 2022.
There will be an opportunity to file one 3-month extension for an additional fee. The USPTO fee for a 3-month extension will be $125 and the extension request must be filed before the initial 3-month deadline.
The goal of the shortened response deadline is to decrease the time to obtain a registration, while also allowing flexibility to request additional time to respond to more complex office actions.
The new shortened deadline will not apply to applications filed through the Madrid Protocol section 66(a).
The deadline for post-registration office actions will remain unchanged until October 7, 2023.
If a response deadline is missed, it may still by possible to revive the application by filing a petition to revive.
We look forward to assisting our valued clients as we navigate the transition to a 3-month response timeline.
The Maier & Maier litigation team successfully defended its client’s right to pursue trademark registration for its prominent jewelry brand, SAUER. In April 2021, Opposer Nextten Stauer filed an opposition proceeding challenging two of Amsterdam Sauer Joalheiros Ltda.’s (“Amsterdam Sauer”) trademark applications for the marks SAUER and SAUER ESTD 1941.
The opposition proceeding challenged the applications on the basis of priority and likelihood of confusion. Representing Amsterdam Sauer, Maier & Maier denied these allegations and used a sound defensive strategy to drive an early and favorable result for Amsterdam Sauer. As a result, the Board dismissed the opposition against each application with prejudice on September 10, 2021. With this win, the Maier & Maier litigation team adds to a series of successful outcomes for our clients, efficiently earning favorable outcomes at the TTAB as well as in district court, at the PTAB, and before the ITC.