Trademark Gridlock: Why the USPTO is Processing Trademarks at a Historically Slow Rate

By Josh Gerben, Esq.

The USPTO is processing new trademark applications at a historically slow rate.

At no time in the history of the United States has it taken longer for a trademark application to be reviewed, moved through the application process, and registered.

As recently as 2020, it would take 3 – 4 months to get a new trademark application reviewed by the USPTO. It currently is taking close to 10 months.

So what happened?

This report, compiled with data reviewed by Gerben IP, will show how the USPTO has been unable to handle an increase in the number of trademark applications being filed.

As the USPTO fell behind, instead of attempting to solve the problem, the agency has instead decided to simply move its standard for how long it should take to process a trademark application.

Business owners are now left without critical feedback for almost a year after filing a trademark application on whether or not new trademarks will be approved for registration and without the important protection that a federal trademark registration provides.

1. The USPTO’s internal goals for processing trademark applications

As with any business or government entity, the United States Patent and Trademark Office has “Key Performance Indicators” (KPI’s), which are quantifiable indicators of performance for specific objectives. The USPTO has set KPI’s for every branch of intellectual property and it is responsible for updating the public with information on how the federal agency is or is not meeting its targets.

One USPTO trademark KPI is known as “First Action Pendency.”

First Action Pendency refers to the length of time between a trademark application’s submission to the USPTO and when it is first examined by a USPTO examining attorney. This timeframe is critical to the total time it takes for a trademark to be registered.

USPTO First Action Pendency 2008 – 2020

From 2008 – 2020, the USPTO’s target KPI for trademark First Action Pendency was 2.5 – 3.5 months.

For example, if a trademark application was submitted on January 1, the USPTO would typically respond no later than the beginning of May with an answer as to whether or not the trademark could be registered.

For this 12-year period, the USPTO hit the target timeline of 2.5 – 3.5 months every single time.

In 2021… everything changed.

USPTO First Action Pendency 2021 – Present

In 2021, the target First Action Pendency was increased to 4.5, a 1 – 2 month increase from the 2.5 – 3.5 month target from the previous twelve years. It increased again in 2022, when the target was set at 7.5 months.

By 2023, the USPTO’s target First Action Pendency was increased to 8.5 months.

Now, if a trademark is filed on January 1, the USPTO will typically not respond until December with an answer as to whether or not the trademark can be registered. The increase in wait time can be seen by the USPTO’s own data in which it publishes the “target” First Action Pendency time with the actual time.

This article will discuss the factors contributing to the extended First Action Pendency timeline, as well as how the USPTO keeps moving the goalposts to make it appear as though it’s hitting its target timelines.

2. Why did the USPTO fall behind in processing trademark applications?

So why has the time it takes the USPTO to review any trademark application increased so significantly in recent years?

Starting in 2015, the number of USPTO trademark applications originating from China more than doubled from the year prior. The amount would double again between 2015 and 2016.

The volume of China-based USPTO trademark applications continued to increase between 2016 and 2017, this time by over 20,000 applications.

In early 2018, it was first discovered that the large quantities of trademark applications originating from China-based applicants were fraudulent filings. The influx was likely caused by the Chinese government providing cash incentives to local businesses for obtaining trademark registrations in foreign jurisdictions.

The fraudulent filings reached an all-time high in September 2020, when 43% of the trademark filings at the USPTO came from China-based individuals and businesses.

In 2020, the world experienced the Covid-19 pandemic. Though most countries saw a downturn in their economies during this time, the number of trademark applications soared worldwide, as seen in a report from the World Intellectual Property Organization¹.

According to USPTO data found in the FY 2020 Performance and Accountability Report², the number of trademark applications filed in the U.S. for 2020 was a 9.6% increase from the number of 2019 filings and an 83.9% increase from 2008³ . The USPTO, however, seemed unconcerned about the increase, stating:

“Recent [USPTO] estimates that begin to incorporate the pandemic’s impact on future demand project the pendencies to remain constant in the upcoming years.”

(FY 2020 Performance and Accountability Report 39).

However, page 28 of the FY 2021 USPTO Performance and Accountability Report⁴ shows that the USPTO’s target First Action Pendency for 2021 had been increased to 4.5 months, a 1 – 2 month increase from the previous years’ targets.

Even though the First Action Pendency goal had been moved, the USPTO still did not hit the new target. In fact, the 2021 Actual First Action Pendency was 6.3 months.

3. The USPTO moves the goalposts

In 2022, the USPTO’s target First Action Pendency was increased by 3 additional months. The new “goal” for First Action Pendency was now sitting at 7.5 months. Unfortunately, this increased timeline was also not met, as the actual First Action Pendency time averaged out to 8.3 months for 2022⁵.

Following this miss, the USPTO once again moved the goalpost and changed the target First Action Pendency for 2023 to 8.5 months. The federal agency is claiming that the current average wait time for First Action Pendency is also at 8.5 months, meaning they are (finally) hitting their targets⁶.

However, no one should take the USPTO at its word here. On the top of the same page, which is aptly named “Trademark processing wait times” is a large callout which indicates that the USPTO is currently examining new applications submitted between November 14, 2022 and November 28, 2022.

When you do the math, you can see that the USPTO is currently examining trademark applications that were filed approximately 41 weeks or 9.4 months ago (as of September 15, 2023).

Upon further review of the Trademark processing wait times page, it indicates that the average and target timelines table was last updated in July of 2023. It’s possible that the average wait time listed may be out of date.

If you search for the page on the Wayback Machine, you can find a screen capture of it from July 2, 2023⁷. The July 2 screen capture shows that the table indicates an average and target of 8.5 months.

However, the trademark processing wait times callout shows that at the time, the USPTO was working on applications submitted between September 02, 2022 and September 16, 2022. After doing the math, you can see that at the time of the last update, the timeline was actually 42 weeks or 9.7 months between application submission and USPTO review.

So, not only is the USPTO moving its KPI targets (which makes it appear as if the federal agency is hitting the targets), it STILL isn’t hitting the extended target and is obfuscating it in the information provided.

4. How do the USPTO processing delays affect business owners?

In 2008, the entire trademark application process, from application submission to trademark registration took approximately 10.5 – 12 months.

For the same length of time in 2023, a trademark application barely starts to move through the USPTO’s system after sitting and collecting dust for 10 months. It currently takes 14 – 18 months or more for trademarks to be registered. In fact, outside of the “First Action Pendency” issues, the USPTO is experiencing significant delays in other portions of the trademark application process.

How many decisions does the average business make in 14 – 18 months? Now imagine the impact if a good percentage of those decisions were dependent on whether the business’ trademark reached registration. This delay could affect growth, expansion, and marketing decisions across the board for a business.

5. What should be done now?

Gerben IP believes that all trademark applicants deserve to have predictable and reasonable wait times when registering trademarks with the United States Patent and Trademark Office.

While the factors that initially increased the wait times were outside of the USPTO’s control, the response from the USPTO has been too slow and completely ineffective.

As shown by this report, it appears the USPTO would rather just move its own internal targets, rather than spearhead a massive improvement in trademark examination to immediately begin reducing the time it takes to process a trademark application.

The current situation is historic in nature. At no time in American history has it taken longer for a trademark to be examined and registered by the United States Patent and Trademark Office.

Ironically, the historic delays come at a time when the marketplace moves faster than ever before. At no point in history have businesses needed to act faster to stay competitive. A business owner now needs to make a critical decision on branding without even the faintest hope that the USPTO will review its application in a timely manner.

The delays have also forced companies such as Amazon and Walmart to set up their own “shadow trademark registers” that enable brand owners to police trademarks based solely on the fact a trademark application has been filed with the USPTO. The result is an overwhelming amount of counterfeit goods reaching American homes.

Gerben IP believes that Congress should demand answers from the USPTO via public hearings to understand why there is a complete lack of urgency from the USPTO to address and fix the historic delays.

The world looks to the United States to set an example on so many fronts. The USPTO has been no exception. Around the world, the USPTO is respected as one of the busiest and best intellectual property agencies. The example we are now setting for the world is that moving the goalposts to claim the office is processing applications fast enough is acceptable. It sounds like something the Russian government would do, but it is the United States.

Sources

1. United States Patent and Trademark Office, 2020, FY 2020 Performance and Accountability Report, https://www.uspto.gov/sites/default/files/documents/USPTOFY20PAR.pdf. Accessed 15 Sept. 2023. p. 30.
2. United States Patent and Trademark Office, 2008, Performance and Accountability Report Fiscal Year 2008, https://www.uspto.gov/sites/default/files/about/stratplan/ar/USPTOFY2008PAR.pdf. Accessed 15 Sept. 2023. p. 56.
3. United States Patent and Trademark Office, 2021, Performance and Accountability Report Fiscal Year 2021, https://www.uspto.gov/sites/default/files/documents/USPTOFY21PAR.pdf. Accessed 15 Sept. 2023. p. 28.
4. United States Patent and Trademark Office, 2022, FY 2022 Annual Performance Plan and Annual Performance Report, https://www.uspto.gov/sites/default/files/documents/USPTO_FY22_FY24_APPR.docx. Accessed 15 Sept. 2023. p. 12.
5. “Trademark Processing Wait Times.” United States Patent and Trademark Office – An Agency of the Department of Commerce, https://www.uspto.gov/dashboard/trademarks/application-timeline.html. Accessed 15 Sept. 2023.
6. “Internet Archive of Current Trademark Processing Wait Times.” Wayback Machine – Internet Archive, 2 July 2023, https://web.archive.org/web/20230702172650/https:/www.uspto.gov/dashboard/trademarks/application-timeline.html.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.