Proposed change to maximum timeframe for extensions


In a jurisdiction such as Israel, where the overwhelming number of applications is filed by foreign trademark owners, the issue of deadlines and extensions for taking various actions before the Trademark Office is of particular importance. This is especially so because instructions for filing an application usually emanate from a foreign law firm, which, in turn, will likely need to receive instructions from its client. 

Against this backdrop, on May 22 2012 the Trademark Office issued a request for comments with respect to a proposed new guideline that would change the maximum term of extension that can be given for submitting a response to an office action. The proposed change is that the cumulative period of extension that may be granted with respect to the filing of a response to an office action will now be six months. In the event that no response is timely filed, the application file will be closed

This proposed change may well put increased pressure on multinational applicants with extensive trademark portfolios to meet this sixth-month extension limitation. This is especially so when the applicant is required to carry out a potentially complex activity, such as assembling evidence to support a claim of secondary meaning. The proposal also raises an administrative question: assuming that applications will now progress more quickly through the examination process, will the Trademark Office require additional manpower? If so, how readily will funding be available to support this additional staff? 

In this connection, one can view the six-month maximum period for an extension to respond to a given office action as working a potential financial hardship to the Trademark Office. This is so because the current practice is to assess a monthly extension fee, payable at the time the extension is required. Under the proposed rule, it can be expected that the aggregate amount of fees collected in connection with requests for extensions will decline. In an age of budgetary retrenchment, the question of where the additional funds will be found is not a trivial one.

Applicants and prospective applicants are invited to submit their comments to the Trademark Office in connection with the proposed change.

Neil Wilkof, Dr Eyal Bressler and Co, Ramat-Gan

Unlock unlimited access to all WTR content