How to Request a Trademark Extension for Office Action?

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Date: 25 Jan 2023

How to Request a Trademark Extension for Office Action?

Trademark registration in India can be done online through the official website of the Indian Trade Marks Registry (TMR). The process involves filling out an application, paying a fee, and submitting it along with any required documents. The TMR will then search for any existing trademarks that may be similar to the one being applied for, and if no issues are found, the trademark will be published in the Trade Marks Journal for the opposition.

The process of trademark registration online in India starts with the filing of an application for registration. The application can be filed online through the TMR's e-filing portal or in person at the TMR office. The application must include the proposed trademark, the goods or services it will be used in connection with, and the applicant's details. If the application is accepted, it will be published in the Trade Marks Journal for the opposition. This allows other parties to raise any objections or issues they may have with the proposed trademark. If no opposition is received or the opposition is unsuccessful, the TMR will register the trademark and issue a certificate of registration.

The entire process can take several months to a year to complete, and it is advisable to seek the help of a trademark attorney to ensure that the application is properly filed and to navigate any issues that may arise during the process. Thus, below are some steps to request a trademark extension.

  • Download Form TM-M: From the Indian Trade Marks Registry (TMR) website. Form TM-M is used to request an extension of time for responding to an Office Action. Forms can be found on the TMR website under the "Forms" or "e-Filing" section.
  • Fill out the form with the necessary information: Application number, Proposed trademark, Applicant's details, Reason for the extension request, Provide a detailed explanation of why an extension is needed, Attach any supporting documentation if necessary (e.g. doctor's note in case of illness)
  • Pay the required fee: Pay the fee either online or in person at the TMR office. Check the TMR website for the current fee for the request for an extension
  • Submit the completed Form TM-M and the fee receipt: Through the TMR's e-filing portal or in person at the TMR office. Keep a copy of the form and the receipt for your records.
  • Monitor the status of your extension request: Through the TMR's e-filing portal or by contacting the TMR office. Keep track of the status to ensure that the time limit of the office action is not missed.
  • Review the Office Action: Before requesting an extension, it is important to carefully review the Office Action and understand the reasons for which the TMR has raised objections or issues with your trademark application. This will help you address the issues more effectively in your response.
  • Consult with a trademark attorney: It is wise to consult with a trademark lawyer before asking for an extension to make sure your justification is sound and to go over any problems that might come up. You can also get assistance from a trademark lawyer in creating your response to the Office Action and making sure it complies with TMR guidelines.
  • Prepare your response: Once you have reviewed the Office Action and consulted with a trademark attorney, prepare your response to the Office Action. This response should address all of the issues and objections raised by the TMR, and provide any additional information or documentation that is required.
  • File your response: Once your response is ready, fill it in with the TMR along with your extension request. Make sure to submit it within the extended time limit granted by the TMR.
  • Follow-up: It's important to follow up with the TMR to ensure that your response and extension request has been received and are being processed. You can check the status of your application on the TMR's e-filing portal or by contacting the TMR office.
  • Wait for the TMR's Decision: Once the TMR has received and reviewed your response, they will decide on whether to accept or reject your trademark application. If the TMR accepts your application, your trademark will be registered. If the TMR rejects your application, you may have the option to appeal the decision or file a new application.
  • Keep records and deadlines: Keep records of all correspondence, deadlines, and documents related to your trademark application and extension request. This will help you stay organized and ensure that you meet all of the TMR's requirements.
  • Keep updated with the TMR's guidelines and regulations: The TMR's guidelines and regulations can change from time to time, so it is important to stay updated on any changes that may affect your trademark application or extension request.
  • Check the status of your application regularly: Keep an eye on the status of your trademark application and extension request through the TMR's e-filing portal or by contacting the TMR office. This will help you stay informed about any issues or delays that may arise during the process.
  • Be prepared for additional costs: Be aware that there may be additional costs associated with requesting an extension and responding to an Office Action, such as attorney's fees or additional fees for filing documents.
  • Consider the legal consequences: It is important to consider the legal consequences of not responding to an office action or missing the deadline. This could lead to the abandonment of the application, which would require you to file a new application, pay additional fees, and start the process over again.
  • Seek professional help if needed: If you are facing difficulties in understanding the process or addressing the office action, do not hesitate to seek professional help from a trademark attorney. They can guide you through the process and help you navigate any issues that may arise.

In conclusion, requesting a trademark extension for an Office Action in India involves several steps and requires careful attention to detail. To ensure that your extension request is granted and your trademark application is processed in a timely and efficient manner. The process to apply for patent online can take several months or even years to complete, and it's important to be patient throughout the process.