A huge surge in foreign and domestic trademark applications has created an “increasing” backlog and slowed examination times, Commissioner of Trademarks David Gooder said in a blog post—and attorneys have noticed.
The U.S. Patent and Trademark Office is trying to better understand the reasons for the influx, hiring more examiners, and implementing information technology solutions, Gooder said in his post. Applications are up 63% over the last year, an increase of about 211,000, Gooder said. The volume in December 2020 alone was up 172% over December 2019, Gooder said.
“We will eventually bring our processing times back to customary levels,” Gooder wrote.
The time taken to examine client applications has soared amid the surge, according to seven trademark attorneys. Applications that examiners usually initially evaluated within 3-4 months, if not less, now often take roughly double that, the attorneys said. Exchanges between examiners and attorneys to iron out applications can also take longer.
“Absolutely, we’ve noticed it, across the board. I’d say most trademark practitioners have noticed. It’s been happening for a couple of months now,” attorney Virginia Wolk Marino of Brinks Gilson & Lione said. “We’re having to readjust timing estimates we give to our clients because it’s definitely made an impact.”
Gooder wrote the surge is at least partly the result of an increase in e-commerce as businesses and the economy shifted in response to the pandemic. Foreign applicants are also playing a role.
The surge has created challenges to clearing marks and assessing risk as well as getting applications through quickly, trademark attorney Danny M. Awdeh of Finnegan Henderson Farabow Garrett & Dunner LLP said. Awdeh said he and his colleagues are “seeing numerous instances of bad-faith filings for copycat marks” out of China.
“We’re seeing clients who are doing very well in this environment, and are filing additional applications expanding their reach and product lines, so that’s contributing for sure,” Awdeh said. “But there’s a very significant portion coming from China.”
The agency has been dealing with the influx of applications from China for years. A few years ago it implemented a rule requiring foreign applicants to use a U.S. attorney to file.
Congress has created new, expeditious paths to block bad faith applications and cancel bad faith marks in legislation passed in December, but the PTO is still crafting details for the new procedures. Trademark attorneys fear that implementing the new law will end up adding to the backlog.
Jennifer Fraser, a trademark attorney at Dykema Gossett PLLC, said she’s also concerned that addressing other issues, including improper specimens and attorneys of record, can divert agency resources away from reducing the backlog.
Examination quality hasn’t suffered as much as speed, attorneys said. Jonathan Menkes of Knobbe, Martens, Olson & Bear LLP said he has had instances where new examiners have made mistakes, but of the sort expected with new hires. Menkes said the PTO is “doing the best it can to insure quality doesn’t suffer,” given the increase.
Marino, along with several other attorneys, empathized with the PTO over the sheer volume that is slowing the registration process.
“I feel for them. They’ve got their work cut out for them,” Marino said.