Navigating Trademark Examination Delays: Strategies for Businesses

By Eric Perrott, Esq.

In the dynamic landscape of business, where quick thinking is often the key to success, a significant roadblock has emerged that is testing the resilience of entrepreneurs – the extended wait time for the USPTO to examine trademark applications.

This challenge has far-reaching implications and makes it difficult for businesses to make informed decisions, plan effective branding strategies, and navigate the competitive marketplace. Despite concerted efforts, the United States Patent and Trademark Office (USPTO) continues to grapple with this issue, leaving businesses in a state of uncertainty.

Understanding the Lengthy Trademark Processing Wait Time

For businesses, the wait time for a trademark application to be examined has evolved into a critical bottleneck. This wait time (typically called “pendency”) now stretches beyond ten months, and has paralyzed some decision-making for enterprises across the spectrum.

The impact of this delay is significant – the ability to know whether a trademark has been approved by an examining attorney is often one of the linchpins for growth, expansion, and marketing decisions. With the current wait time, businesses are left in a state of limbo, unable to take meaningful strides in developing their brands or expanding their offerings.

At its core, the timely examination of trademark applications drives innovation, fosters business development, and ensures a competitive edge. However, the prolonged wait has introduced a level of uncertainty that disrupts these dynamics, prompting businesses to reevaluate their strategies and branding efforts.

You can view the Current Trademark Processing Wait Times on the USPTO’s website.

The USPTO’s Uphill Battle to Reduce Wait Times

To address this pressing issue, the USPTO has launched several initiatives, including:

• A requirement that all foreign applicants use United States attorneys to file trademark applications.
• Numerous rounds of hiring to bolster its examination capabilities.
• Pulling in any USPTO attorney with examination experience (regardless of their title) to help with the backload.

While these efforts are commendable, they are not enough, as the trademark application processing wait times remain largely unaffected.

This phenomenon underlines the intricate nature of trademark examination and underscores the need for more holistic solutions that extend beyond hiring more personnel.

The United States Patent and Trademark Office (USPTO) is experiencing a huge surge in trademark application filings which has resulted in a significant increase in unexamined application inventory. As a result, some applicants are experiencing longer than normal wait times at various stages of the application process, such as being assigned to an examining attorney and receiving responses to office actions.

USPTO.gov

Unpacking the Underlying Causes: China and COVID-19

Upon examination, the factors contributing to the prolonged wait times become evident.

A surge in fraudulent applications, particularly from China, has flooded the system. These applications often present poorly drafted materials, counterfeit specimens, and deceptive claims. This influx overwhelms the examination process, diverting resources from authentic applications and increasing the backlog.

The COVID-19 pandemic has further exacerbated the issue. The surge in online marketplace commerce led to an unprecedented boom in trademark filings, as businesses rush to secure their digital presence. The pandemic-induced digitization of commerce has prompted businesses to safeguard their online brands, further fueling the demand for trademark registrations.

“We are continuing to explore the reasons behind the surge, but we do know that the increase comes from both foreign and domestic filings and is caused in part by an increase in e-commerce during the pandemic. For our customers, the bottom line is that applications are coming in faster than we have historically been able to examine them, and the backlog is increasing. We are keenly aware of this challenge and have taken steps to increase productivity, while maintaining the high quality our applicants expect.”

David Gooder, Commissioner for Trademarks, 2021

These combined factors – the influx of fraudulent applications and the increased volume of COVID-related filings – have created a perfect storm, leading to the protracted wait times that businesses currently face.

Strategies for Mitigating Effects of Lengthy Trademark Processing Wait Times

In light of these challenges, businesses must adopt a proactive approach to mitigate the effects of extended wait times. Brand owners need to have foresight in their trademark strategies, seeking trademark protection for future brands, slogans, and product names, long before they reach the marketplace.

Working with a skilled trademark attorney can help mitigate some of these risks, but ultimately business owners need to be aware of the delays and factor them into their priorities and timing.

Here are a few recommendations:

1. Anticipatory Trademark Protection: Rather than waiting for imminent market entry, consider seeking trademark protection for upcoming brands, slogans, and product names. This might mean approaching the clearance process with multiple potential trademarks and clearing (and potentially filing for) multiple options, in case one or more is not viable.
   
   By initiating the trademark application process early, businesses can ensure that their innovations are safeguarded well in advance, minimizing potential delays during crucial phases.
2. Collaborate with Skilled Trademark Attorneys: Enlisting the expertise of experienced trademark attorneys is crucial. Trademark professionals possess an in-depth understanding of the examination landscape and can guide brand owners in making informed decisions.
   
   Their insights can help navigate complexities, expedite processes, and ensure that applications are meticulously prepared to withstand scrutiny.
3. Strategize for Expansion: For businesses contemplating expansion into new industries or ventures, it’s essential to account for the extended wait times in their planning. By factoring these delays into expansion timelines, businesses can better manage expectations, align their strategies, and make more informed decisions about the optimal timing for market entry.
4. Prioritize Core Offerings: While contemplating trademark expansion is vital, core goods and services should remain a priority. By protecting the heart of your brand, you can continue operations and innovation without being overly reliant on the extended examination process for new trademarks.
5. Advocate for Systemic Change: Gerben IP regularly advocates for good trademark policy and encourages brand owners and other IP professionals to do the same. As the business community grapples with the repercussions of prolonged wait times, collective advocacy for systemic change becomes paramount.
   
   By engaging in dialogues, sharing insights, and collaborating with policymakers, brand owners, legal professionals, and industry associations can influence policies that address the root causes and streamline the examination process.
   
   The USPTO has many challenges it faces as the United States’ intellectual property governing body, but we at Gerben IP believe that predictable (and reasonable) wait times are crucial for businesses and encourage everyone to pressure policymakers into providing support and focus for this crucial problem.

Final Thoughts

In the realm of brands, where a trademark registration can be invaluable to the growth and decision-making process of a business, the extended wait time for examination is a formidable challenge. Decision-making is stifled and expansion plans can hang in the balance, as businesses find themselves caught between the need for timely protection and the realities of an overwhelmed system.

From a policy perspective, IP professionals and brand owners need to ensure that pendency time remains at the top of the USPTO’s list of priorities.

Until the extended trademark processing wait times can be resolved, businesses can mitigate the challenges it presents by effectively planning their brand protection strategies and filing trademarks early in the process.

If you need help obtaining a federal trademark registration with the USPTO, contact the experienced trademark attorneys at Gerben IP today.

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Eric Perrott, Esq.

Eric Perrott, Esq. is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s ability to counsel clients through any stage of trademark and copyright development and protection allows him to provide his clients with personalized advice and unique analysis. Eric can be reached directly at: eric@gerbenlawfirm.com. The contents of this blog are for informational purposes only and may not be relied on as legal advice.