The USPTO has been experiencing a surge in new trademark application filings since the height of the pandemic and this has caused delays in examining applications and issuing trademark registrations. There are many possible reasons for the surge in new trademark applications filings including a record number of small businesses being formed, changes to Amazon’s brand registry program, established businesses pivoting to stay afloat during the lockdown, and the continued focus on a global economy and an e-commerce business strategy. Even established businesses and multi-national corporations are realizing that there may be gaps in their trademark filings such that they need new trademark applications. The U.S. remains a leading economy for most businesses (whether those companies are based here), and the USPTO reports that new trademark applications are up a staggering 63% over last year, which translates to more than 200,000 new applications to examine.
Traditionally, applications are assigned to a trademark Examiner 3-4 months after filing. As of the writing of this blog post, we are seeing traditional applications being assigned to Examiners in 5-6 months and special applications like cannabis marks may take even longer to be examined. These delays could potentially extend the registration process to 15 months or longer for applications that claim use in commerce and experience no issues during examination.
Tips to Combat the USPTO Delays
What can trademark counsel do to help counsel clients through these delays? The trademark process has not changed in decades, and it’s important to prepare our clients and communicate that there is a delay.
First, it’s critical, especially given the delays, that you conduct a comprehensive trademark search for your clients that covers the USPTO and common law databases. This will give your clients peace of mind that they can use their mark without risk of infringement regardless of how long it will take to secure registration. If you are not conducting comprehensive searches or need help learning how – we can help.
Second, your client, should file as soon as their business plans are solidified, and they have settled on a name. The USPTO examines applications in the order in which they are received, so if the client is a prior user, but waits to file, they risk having someone leapfrog them at the USPTO, which may mean you may need to sue at the TTAB to secure their trademark, which can add significant cost and time to the process. A comprehensive search will reveal these issues. Also, by filing on an intent to use basis, even for a business that plans to start using presently, they could get a head start on their use documents and be ready once the Notice of Allowance issues.
Remember, that your client’s trademark rights begin when they start using the mark in interstate commerce, so be sure that your client keeps impeccable records of when they first begin using their mark in interstate commerce. This helps you prepare your specimens or prepare your case if ever there is a dispute over priority at the TTAB or in Federal Court.
Lastly, pack your patience and keep your client informed. Adjust your communications that the time for examination is taking a bit longer. You may not realize it, but back in the early 2000s, there were similar delays between the time of filing an application to examination. From talking to Examiners who worked at the USPTO at that time, the average wait time was as high as 6-9 months between application and first Office Action, and it took a few years to clear up the backlog. The USPTO has hired many more Examiners and will continue to do so, but it will take some time to clear up this backlog. You are not the only one affected. The issue is not unprecedented, and there is no conspiracy, I promise you. It will take as long as it takes to resolve the backlog. Our job is to manage our client’s expectations and ensure their rights are not affected.
Trademark law is a highly nuanced area of the law and navigating the process should be done only with the guidance of an experienced trademark attorney. If you need help with your trademark application or understanding how these delays may affect you or your trademark rights, please contact us.
Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. She has extensive intellectual property experience with a particular focus on trademark prosecution and enforcement. She has protected some the world’s largest brands in more than 150 countries and specializes in helping small and medium sized businesses grow and protect their brands. Contact her at firstname.lastname@example.org.
Stacey is also the founder and lead instructor of Trademarkabilities®, an online trademark academy for lawyers, whose mission it is to prepare lawyers to be confident and effective practitioners before the USPTO. To learn more, please visit https://www.trademarkabilities.com/.